A Comparative Study on Japanese Trademark Protection ... · A Comparative Study on Japanese...

The long term fellowship program under WIPO Funds in Trust/JPO

January 2003 – July 2003

A Comparative Study

on Japanese Trademark Protection System with

Iranian Trademark Protection System

Prepared by:

Zahra Bahraini

Industrial Property Office of I.R. of Iran

Tokyo-June 6, 2003

Acknowledgement

My deepest appreciation to the World Intellectual Property Organization (WIPO) and

to the Government of Japan especially to the Japan Patent Office (JPO) and the Asia

Pacific Industrial Property Center of Japan Institute of Invention and Innovation (JIII)

for funding and organizing this Course;

My appreciation to the Registration Organization of Deeds and Properties of I.R. of

Iran and Director General of Registration Office for Companies and Industrial

Property for giving me this opportunity;

My special thanks to all the officers of JPO especially to Mr. Shinichiro Ota,

Commissioner of JPO; Mr. Takashi Sakurai, Director of the International Affair

Division; Mr. Yuji Okuma, Director of the Regional Policy Office of International

Affair Division, Mr. Takaki Hiroo, Deputy Director of the International Affair

Division, Ms. Yuka Tsukamoto, Ms. Ai Hamagishi, Ms. Yuriko Homma for warm

welcome, assistance, patience, time and friendship;

My special, special thanks to dearest staff of APIC; Mr. Shingo Tsuji, Director

General of APIC, Mr. Kitazawa, Mr. Sakai, Ms Kinoshita, Ms. Kozawa and many

others for their warm welcome and providing me good conditions and assistance for

carrying out the research work.

My gratitude to Mr. Kanji Kudo, for his advise and support in this research work and

many others who are directly or indirectly involved in making this research possible.

My sincere thanks to my dearest colleagues in IP Office for their support and

patience;

Zahra Bahraini

I. R. of Iran

Table of Contents

Chapter I page Introduction Protection of Trademark in Japan and the relation with International Treaties 3 Legal system for protection of Trademark in Japan 3 History of changes in Japanese Trademark system 5 The Legal system for protection of Industrial Property in Iran 7 Functions of Trademark 9 Chapter II 1- Criteria for Protection Definition of a trademark 10 Unregistrable trademarks 11 2- Requirements for trademark registration Unity in application 14 First-to-file rule 14 Collective trademarks 15 Requirements for trademark application 16 3- Examination System Principle of examination by examiner 18 Rejections 19 Decisions to Register 20 4-Trademark Rights Effects of trademark right registration 21 Term of trademark right 22 Registration of Renewals 22 Transfer of trademark right 23 Transfer of Collective Trademark Right 24 Right of Exclusive Use 24 Right of Non-Exclusive Use 25 Prior use 25 Infringement and Injunction 27 5- Opposition System Opposition to Registration 28 Opposition process 30

6- Trials System Trail against examiner’s decision of refusal 32 Trail against ruling to decline amendment 32 Trail for invalidation of a trademark registration 33 Trail for cancellation of a trademark registration 34 7- Defensive marks I. Registrability of defensive mark 35 II. Purpose of Defensive Mark Registration System 35 8- Publication Trademark Gazette 36 9- Re- Classification System I. Purpose of Registration of Re-Classification of Goods 38 II. Registration of Re-Classification 38 10- Protection of Well known and Famous Trademarks Japanese Law 41 Criteria for Determining of Well known and Famous Trademarks 46 Distinction in Trademark Law and Unfair Competition Prevention Law 48 Registration or Actual use as a Condition for Protection 49 Chapter III Administration Procedure of Japanese Trademark Registration System Application 51 Publication of application 51 Formality Check 51 Substantive Examination 52 Decision of Registration 53 Opposition to the Granting of a Trademark Registration 53 Trial System 54 Procedure for the protocol Relating to the Madrid Agreement 55 Remedy against refusal 56 JPO Anti counterfeiting efforts 57

Computer System Use 1) Online Acceptance of Trademark Application 59 2) Real time trademark search and preparation of drafts using electronic data 59 3) On-line of draft documents to applications 59 4) On-line acceptance of demands for trail 60 Trademark Information Provision Services I. Trademark Application Trends 60 II. International Trademark Application Trends 61 III. Trademark Examination 61 IV. Accelerated Examination 61 V. Examination Guidelines for Trademarks 62 Industrial Property Digital Library 63 Chapter IV Differences between two Systems 65 1- Definition of Trademark 65 2- Requirements for Registration 66 3- Changes in Registered Marks 66 4- Prior Use 66 5- Opposition System 67 6- Trials System 68 7- Defensive Marks 68 8- Service Marks 69 9- Restoration of Trademark Rights 69 10- Re-Classification System 70 11- Compulsory registration 70 12- Publication 71 Other differences 71 Recommendations 72 Conclusion 76

“In the name of God”

Foreword

This research report consists of the comparative study of the major provision of

Japanese Trademark Law 1999 (as amended on April 13, 1959, entry into force on

April 1, 1960) and Iranian Trademark Law (1931) and its Regulations as amended in

1958.

The Protection of Trademarks in Japan is under Trademark Law and Unfair

Competition Prevention Law. Japan is a party of various international treaties such as

Paris Convention, Nice Agreement, Trademark Law Treaty, and etc… for protection

of Trademark.

Iran is a party of Paris Convention for protection of Patents and Trademarks and also

a member of Madrid Agreement at present. Other related treaties are under

consideration. Protection of Trademarks in Iran is under the Trademark and Patent

Registration Law and it’s Regulations.

The report outline the Introduction and historical development of Japanese Trademark

Law as well as Legal System for Protection of Industrial Property in Iran.

The major part of the report consist of the comparison of the Japanese Trademark

System with Iran Trademark System in all the procedures such as trademark

application, the rules and standards required for determining a registrable mark,

opposition systems and trails system and etc… as well as the variations between these

two systems.

There could be a possibilities these related provisions be adopted in her country in

moving towards harmonization and unification of the trademark systems but taking

into account the diversity of social and cultural aspects. The researcher also looks into

Trademark Computer System, a paperless Project by JPO focusing on the need to

shorten in the period required in granting a right and increasing the efficiency of

processing these rights by virtue of highly advanced information technology.

1

Chapter I

Introduction :

The intellectual property system is one of the cornerstones of modern economic

policy at the national level and a catalyst for development. It will increasingly become

an important tool for sustainable development of developing countries, especially the

least developed in the knowledge-based society of this millennium. Therefore,

understanding the legal and economic foundations of the intellectual property system

is a prerequisite for comprehending its increasing importance and role in national

strategies for enhancing competitiveness and accelerating socio-economic

development.

Intellectual property comprises of creations of the human mind, of the human

intellect. It consists mainly of two branches, one being industrial property dealing

with technological inventions, utility models, trademarks for goods and services,

industrial designs, etc.; the other being copyright, which protects literary, musical,

artistic, photographic and audiovisual works, films, computer programs and software,

etc., as well as related rights, that is neighboring rights, namely the rights of

performing artists, producers of phonograms and broadcasting organizations.

As far as trademarks are concerned, any sign, or any combination of signs, capable

of distinguishing the goods or services of one undertaking from those of other

undertakings shall be capable of constituting a trademark (Article 15-1 of the TRIPS

Agreement), the same Article provides that such signs, in particular words including

personal names, letters, numerals, figurative elements and combination of such signs,

shall be eligible for registration as trademarks.

The trademark enables its owner or enterprise to build up a reputation for goods

offered in relation to that trademark, and compels the owner of the mark to strive to

maintain and improve the quality of goods or services offered under the mark. The

exclusive right of the owner of a mark precludes others from using it. Marks have an

increasingly important role in a country’s commerce and trade as they stimulate

economic progress.

2

Nowadays, there is a growing awareness that intellectual property rights protection

is a crucial part of the new global trading system. International trade in goods and

services protected by intellectual property rights is increasing, and both developed and

developing countries have recognized that it is in their interest to provide strong

intellectual property rights protection in order to participate in the benefits of such

trade.

Strong intellectual property protection with adequate and modernized legislation and

its effective enforcement is essential for ensuring economic growth. Since the

Japanese trademark jurisprudence is conceptually well-developed, fascinating body of

law with a long and rich tradition, so it has been considered as a model for this

research study.

3

Protection of Trademark in Japan and the relation with International Treaties:

Since it established its first legal system to protect trademarks in the Meiji era, Japan

has carried out a series of revisions to its trademark law. From time to time, these

revisions have been made as required to match domestic industrial developments

calling for changes in the trademark protection system and to comply with

requirements under various international treaties the country has acceded to.

Japan is a party of various international treaties such as Paris Convention, Nice

Agreement, Trademark Law Treaty, Madrid Agreement for the Repression of False or

Deceptive Indication of Source on Goods (Including Additional Made in Stockholm

on July 14, 1967), Madrid Protocol Concerning the International Registration of

Marks and also a member of TRIPS Agreement.

Legal system concerning Protection of Trademark

1-Trademark Law and Unfair Competition Prevention Law

The Protection of Trademarks in Japan is under Trademark Law and Unfair

Competition Prevention Law. Although different in their purposes, the two laws are

common in seeking to “establish economic order through the maintenance, etc, of the

business reputation of persons using trademarks and contribute to the interests of

consumers.”

2-Legal system for protection of Trademark

In principle, trademarks are protected under the Trademark Law in Japan.

However, matters too specific or too technical to be stipulated in a law (for example

simple procedural matters such as concrete ways of indication in an application, etc.)

and matters requiring flexibility to execute prescribed matters as adequately as

required are separately set forth in “cabinet orders” and “ministerial ordinances”

4

• Trademark Law Enforcement

Sets forth “Classification of Goods and Services,” “Qualification of Examiners

and Trail Examiners,” etc.

• Trademark Registration Order

Sets forth “Matters to be Registered Concerning Trademarks,” “Procedures for

Registration,” etc.

• Order on Fees Relating to the Patent Law, etc.

Sets forth the specific amounts of fees, such as “Application Fee”, “Trail

Demand Fee,” etc.

• Enforcement Orders related to the Exempted Procedures for IP

Sets forth Application for Trademark Registration etc. as Specific Procedures

which may be applied through electronic information processing Systems

• Regulations under the Trademark Law

Sets forth “Form of Application for Registration of Trademark,” “Form of

Request for Renewal Registration of the Term of the Trademark,”

• Trademark Registration Order Enforcement Regulations

Sets forth “Method for Registration of Establishment of Trademark Right,”

“Form of Request,” etc.

• Enforcement Regulations related to the Exempted Procedures for IP

Sets forth “assignment of identification numbers,” “comprehensive proxy,”

and “filing of deposits” etc. as exemptions of procedures related to industrial

properties including trademarks.

• Ministerial Ordinance related to the Procedures for cash payments of IP fees

Sets forth “Cases in which cash payments of the fees for industrial properties

are allowed”, “Issuance of payment slips,” and “payments” in order to accept

bank transfer payments of fees for industrial properties including trademarks

5

History of Changes in Japanese Trademark Protection System:

Since the “Trademark Ordinance” was adopted in 1884, the trademark protection

system in Japan has been revised and amended many times with changes incorporated

to comply with requirements under various international treaties and match the ever

changing economic situation in Japan.

The history of the Japanese Trademark law is chronologically presented bellow:

Adoption of Trademark Ordinance of 1884

1) Adopted “principle of registration” “first to file rule” and “principle of

examination by examiner”

2) Term of a trademark right set at 15 years from the date of registration in the

Trademark Register

3) Transfer of trademark registered only allowed when executed together with

the transfer of “good will”

Revision of Trademark Ordinance of 1888

1) Term of a trademark right set at 20 years from the date of registration in the

Trademark Register

2) Transfer of a trademark right only allowed when executed together with the

transfer of “business”

3) Demand for a retrial of a decision of refusal only allowed after re-examination

by examiner

Revision of Trademark Law of 1899

1) A foreign registered trademark in Japan, valid for the duration of its original

registration within a period not exceeding 20 years

2) Transfer of a registered trademark was prohibited with similar trademark of

the same owner separated

3) Added Priority-related provisions, etc. to comply with requirements under the

Paris Convention

6

Revision of Trademark law of 1909

1) introduced associated trademark System

2) allowed Divisional transfer of a trademark law

3) added Provision calling for a trademark to be “distinctive” to be registered,

Revision of Trademark law 1921

1) “Application Publication System” introduced

2) introduced Collective mark system

3) incorporated an trial for the cancellation of a trademark law

4) a change in the definition of an infringement from an offense prosecutable on

complaint to an offense prosecutable without complaint


1) Term of a trademark right set at 10 years from the date of registration in

Trademark Register

2) All forms of transfer allowed only except for similar trademarks owner

3) abolished Collective mark system

4) allowed Licensing of a right to use a registered trademark

5) introduced Defensive mark system


1) required Indication of “Business of Applicant” in an application

2) added A provision concerning examination of the status of use at the time of a

renewal of the term of a registered trademark

3) placed Burden of proof in case of a trail for the cancellation of a registered

trademark on its owner


1) adopted Service marks system

2) adopted the International classification under the Nice Agreement


New provisions added and revisions made to comply with requirements under the

WTO TRIPS Agreement

7


1) New provisions added and revisions made to comply with requirements under

the Trademark Law Treaty

2) Abolished Associated trademark system

3) Allowed Transfer of similar trademarks of the same owner

4) Adopted Three-dimensional trademark system

5) Adopted “Standard Character” trademark system

6) Allowed an installment payment of the registration fee

7) Adopted “Re-classification” system


1) Review of the method of calculating the amount of indemnity for damages

caused by infringements

2) Issuance of trademark registration certificated and the defensive mark

registration certificate


1) New establishment of the pecuniary right of a claim based on a trademark

prior to the registration of its establishment

2) Implementation of the Protocol relating to the Madrid Agreement concerning

the international registration of Marks

3) New establishment of a prompt publication system for trademark registration

applications

4) Acceptance of the restrictions and corrections related to classification at the

time of payment of the registration fees

The Legal System for the protection of Industrial Property in Iran The legal system for Protection of Industrial Property include Patents, Industrial

designs, trademarks, service marks, trade names, appellation of origin and prevention

of unfair competition.

The protection of industrial property enjoys a long and rich legislative history in Iran.

This has given rise to an effective and wealthy jurisprudence in this respect.

8

This system is based on the following Laws and regulations:

I- The Constitution

II- Various Provisions of the Civil Code

III- Article 528 of Commercial Code concerning Trade Names

IV- Trademark and Patent Registration Law (1931)

V- The Regulations for Execution of the Trademarks and Patent Registration law, as

amended in 1958 and its further amendments.

VI- The Act on Mandatory Indication and Registration of Trademarks on Goods such

as Pharmaceuticals, Foodstuff, and Cosmetics (1949).

VII- The Law allowing accession of Government of Iran to the Paris Convention for

Protection of Industrial Property (1959).

VIII- The Law for Protection of Rights of Developers of Computer Software (2000).

However, the rules of procedure for this law is yet to be adopted.

Iran is a member of Paris Convention for protection of Industrial Property as well as

its revised version which was ratified in 1959 and 1998 respectively. It should be

pointed out that according to article 9 of the Iranian Civil Code, this Convention and

its revised version posses the force of Law.

Madrid Agreement concerning the International Registration of Marks in 2001 was

accepted in the year 2001 and the bill suggesting acceptance of the Protocol and

amendments of the Agreement have been presented to the Judiciary Power. It will be

subsequently reviewed by Council of Ministers and submitted to the Islamic

Consultative Assembly for final approval.

Having considered the above system and the fact that parts of the TRIPS Agreement

relating to the protection of Industrial property is generally based on the Paris

Convention, one could say that there is consistency, with few exceptions, between the

protection of industrial property in Iran and the TRIPS Agreement. The provisions of

Paris Convention concerning registration of trademarks, patents, geographical

indications, issuance of compulsory license, rejection of registration of patents or

trademarks for the reason of being contrary to morality or public order, the principle

of national treatment, prevention of unfair competition, and confidentiality of trade

9

secrets are almost in conformity with the provisions of the industrial property rights

system in Iran and those of TRIPS Agreement. In regard to trade names, it is worth

mentioning that this issue is addressed in the article 28 of the Commercial Code

whose procedure rules is yet to be adopted.

Functions of the trademark

1- Function to indicate the origin of goods This function indicates that the goods provided with the mark and services using the

identical trademark have always been provided by a certain manufacturer, seller or

supplier.

This function is the most essential and fundamental among the functions of the

trademark, in consideration of its historical background that the importance of this

function has been increasing as the economy grew, resulting in the creation of the

trademark protection system.

2- Function to guarantee quality This function guarantees the reliability of the marked goods and the services using

the identical trademark, which always maintain a certain level of quality.

It is also guarantees that the goods marked with a the services using the identical

trademark maintain the quality required by business partners and customers, but it

does not necessarily mean that they always maintain superior quality.

3- Function as an advertising device This function motivates business partners and customers to purchase and use goods

and services by letting them know that they are the goods and services of the certain

company, through the use of a trademark as an advertising device.As the mass media

have been developing in recent years, the importance of this function has also been

increasing. Companies are able to enhance their corporate image by instilling their

trademark, which represents their business credibility accumulated over the years, in

the minds of their business partners and customers. Thus, it can be said that the

function as an advertising device is very closely related to the nature of a trademark as

property.

10

Chapter II 1- Criteria for Protection Definition of a Trademark According to a widely accepted interpretation, trademarks are “marks used by a

business operation with respect to its goods or services to allow traders and consumers

to distinguish his goods or services from those provided by other parties and to

indicate the identification of the goods or services”.

A trademark protected in Japan as a mark under the Trademark Law in section 2(1)

Defines “trademark” as characters, figures, signs, three-dimensional shapes or any

combination thereof, or any combination thereof with colors and section 2(i) states

that the marks used in respect of goods by a person who produces, certifies or assigns

such goods in the course of trade; and section 2(ii) states that marks used in respect of

services by a person who provides or certifies such services in the course of trade

(other than as in (i)), also section 3 (1) states the distinctiveness as a requirement for

trademark.

Iran trademark law in Article (1) provides that a trademark may be adopted to

distinguish or specify the products of a group of farmers or industrialists, traders, or

products of a city or a town, or a region of a country. According the definition in this

law “a trademark is any type or form of marking composed of drawing, picture,

number, letter, wording, seal, phrase, special wrapping, etc. which is adopted to

distinguish or specify a particular industrial, commercial or agricultural product.”

* The common scope of the protection in both of the systems are character marks,

figurative marks, signs marks and composite marks. One of the differences between

these two definitions is that Iran trademark law dose not provide any explicit

protection for three-dimensional shapes as well as any combinations thereof with

colors, although the protection of pictures and wrappings is provided by this law.

Numeral marks are not protectable in Japan. According the section 3(1)(v) of this law

trademarks which consists solely of a very simple and commonplace mark are not

registrable. Although the examination guidelines of trademarks provides that in the

case of trademarks with more than two digits of numerals indicated by kana characters

11

representing their sounds where they are distinctive may be registered such as (one

two three) while the trademarks with a digit or two digits of numerals considered as a

trademark consists solely of a very simple mark which falls under the same provision.

Unregistrable Trademarks

In Japan, according the section (4) of trademark law the following trademarks shall

not be eligible for registration:

(1) trademarks which are identical with, or similar to, the national flag, the imperial

chrysanthemum crest, a decoration, a medal of merit, or a foreign national flag;

(2) trademarks which are identical with or similar to, a State coat of arms or other

emblem (other than a national flag) of a country party to the Paris Convention, a

Member of WTO or a contracting party to the TLT which have been designated

by the Minister of Economy, Trade and Industry;

(3) trademarks which are identical with, or similar to, a mark indicating the United

Nations or any other international organization and designated by the Minister

of Economy, Trade and Industry;

(4) trademarks which are identical with, or similar to, the Red Cross ensign on a

white ground or the title Red Cross or Geneva Cross;

(5) trademarks comprising a mark identical with, or similar to, an official seal or

sign which indicates supervision or certification by the Government of Japan or

by the Government of a country party to the Paris Convention or a Member of

the WTO or a contracting party to the TLT, or by a local public entity and which

has been designated by the Minister of Economy, Trade and Industry, which are

used on goods or services identical with, or similar to, the goods or services in

respect of which such seal or sign is used;

(6) trademarks which are identical with, or similar to, a famous mark indicating a

State or a local public entity or an agency thereof or a non-profit organization or

enterprise working in the public interest;

(7) trademarks liable to contravene public order or morality;

(8) trademarks containing the portrait of another person or the name, famous

pseudonym, professional name or pen name of another person or the famous

abbreviation thereof ;

12

(9) trademarks comprising a mark which is identical with, or similar to, a prize

awarded at an exhibition held by the Government or a local public entity or at

one which is not held by the Government, etc. but has been designated by the

Commissioner of the Patent Office or at an international exhibition held in a

foreign country by its government, etc. or a person authorized thereby ;

(10) trademarks which are well known among consumers as indicating the goods or

services as being connected with another person's business, and trademarks

similar thereto, and which are used in respect of such goods or services or

similar goods or services;

(11) trademarks which are identical with, or similar to, another person's registered

trademark applied for prior to the filing date of the trademark application

concerned and which are used on the designated goods or designated services;

(12) trademarks which are identical with another person's registered defensive mark,

and which are used on the designated goods or designated services covered by

the defensive mark registration;

(13) trademarks which are similar to or identical with trademarks registrations which

have terminated less than one year prior to the subsequent Applicant’s

application date and where such trademarks are used on the Identified Goods or

Services or on similar goods and services. This provision shall not apply to

registrations which had not been used for one year prior to the date the

registration terminated. In the event a registration is cancelled or invalidated, all

trademark rights shall cease on the date of the decision.

(14) trademarks which are similar to or identical with the name of a variety

registered under Section 18(1) of the Agricultural Seed and Seedlings Law (Law

No. 83 to 1998), and which are used on the seeds or seedlings of the variety

concerned or in respect of similar goods or services;

(15) trademarks which may cause confusion regarding goods or services related with

another person's business (other than the trademarks mentioned in paragraphs

(10) to (14));

(16) trademarks which may cause a misconception regarding the quality of the goods

or services;

(17) trademarks which, as used on or in connection with wines or spirits, identify a

place other than the origin of the goods either in Japan or in any member state of

the WTO, if such conduct is prohibited in that country ;

13

(18) trademarks which are merely three-dimensional shapes of goods or their

packaging and whose shapes are essential to the function of the product or their

packaging;

(19) trademarks which are well known among consumers in Japan or abroad as

indicating the goods or services as being connected with another person's

business, and trademarks identical with or similar thereto, and which are used by

the applicant for unfair intention in respect of such goods or services.

In Iran, according the Article 5 of trademark law none of the following marks may be

registered as a trademark or as an element of a trademark:

1- National flags of Iran or any other flag which the Government has banned its

use as a trademark, The Red Crescent, signs and medals of the Government of

Iran.

2- Words and expressions referring to authorities of Iran.

3- Signs and marks of official institutions, centers and foundations such as the

Red Cross Society, The Red Crescent and the like.

4- Marks contrary to public order or morality.

Also the Article 9(2) of Iran Trademark Law and Article 5 of it’s Regulation provides

that if the mark has already been registered in someone else's name, or if the similarity

or resemblance between the mark under application and a mark that has been

previously registered is to such an extent that it may confuse ordinary consumers and

persons without specialized knowledge, and it may be considered with due regard to

the appearance, pronunciation and meaning or any other characteristic likely to

mislead the ordinary consumer or in the case of Generic terms or Geographical

names likely to mislead the consumers as to the origin and quality of the goods shall

not be granted registration as a distinctive mark.

* The prohibited indications embody in trademark law of almost every country

member under Paris Convention. However, the Items (8), (9), (10), (12), (13), (14),

(18) is not stipulated in Iran Trademark Law, since Iran is a member of Paris Union,

so in many cases with referring to the Articles of Paris Convention such as Article

6bis for protection of Famous and Well-Known marks and Article 6ter regarding

14

prohibitions concerning State emblems, Official Hall marks and Emblems of

International Organizations provides the necessary protection in the above cases if any.

The principle of protection of the public order or morality is the same, but the

different nature and culture of two countries may finally affect the result of judging.

Also Iran Trademark Law does not provide any protection for wines and alcoholic

beverages because of Islamic assumption thereof, so there is no provision regarding

Item 17 of the unregistrable marks, though according the Note (1) of Article 5 of the

said Regulations the Geographical names likely to mislead the consumers as to the

origin and quality of the goods shall not be granted registration as a distinctive mark.

2- Requirements for trademark registration

Unity in application

In Japan, an application for a trademark registration shall relate to a single trademark

and shall designate one or more items of goods or services in respect of which the

trademark is to be used according to the classes of the classification of goods and

services, prescribed by Cabinet Order. (Section 6)

In Iran, according the Article 4 of Regulations of this Law anybody who

simultaneously applying for several trademarks shall file a separate application for

each of them in compliance with the rules set out in these Regulations.

First to File Rule

In Japan, according the Section 4(1)(11) and Section 8 of this Law in case where

there are more than one application made for the registration of identical or similar

trademarks used for identical or similar goods and/or services, an applicant who first

made the application is granted the registration of a trademark under this rule.

Where two or more trademark applications relating to identical or similar trademarks

which are to be used on identical or similar goods or services are filed on the same

date, only one applicant, agreed upon after mutual consultation or chosen by the

15

drawing of lots conducted in fair and just manner among all the applicants, may

obtain a trademark registration for the trademark. (Section 8(5))

In Iran, according the Articles 2 and 14 of this Law the first to register will enjoy

exclusive use of the trademark. However if during the registration procedures or after

registration it is proven to the court that a third party has had prior and continuous use

of the trademark the mentioned mark will be cancelled and the third party can register

trademark in his own name by court order. Although these are supporting evidences in

such cases only, otherwise the party who first applies for registration can benefit the

rights from the registration.

* According the provisions said above it is made easy to determine the relationship

between an earlier–filed application and a later–filed application based on the filing

dates of the applications. The difference is that in Iran in the case of the filing two or

more trademark applications relating to identical or similar trademarks which are to

be used on identical or similar goods or services on the same date, only one applicant

whose application number is earliest may obtain the trademark registration, while in

Japan this is agreed upon after mutual consultation or by the drawing of lots

conducted in a fair and just manner among all the applicants, one applicant may

obtain a trademark registration for the trademark.

Collective trademarks

In Japan, according the Section 7 of the Trademark Law an Aggregate corporation or

industrial business corporative association and other associations established under

the special law (excluding those which are not legal entities), or foreign legal entities

corresponding thereto shall be entitled to obtain a collective trademark registration

with respect of a trademark for use by their members. Any person desiring the

registration of a collective trademark shall submit to the Commissioner of the Patent

Office with respect to a trademark application under Section 5(1) a document proving

that the applicant is a legal entity referred to Subsection (1) of the said law.

In Iran, according the Article 1 of the this Law and 2(5) of it’s Regulations for the

collective marks intended to identify the products of a group of farmers or

16

industrialists, traders or produce of a society, a town or city, or a district of a country,

a certificate issued by a competent authority attesting the right of use of the trade

mark by the manufacturers of the goods covered by the mark shall be submitted (In

Iran, the said competent authority whose certificate the Registrar shall accept as

evidence of the facts referred to in this paragraph, shall be respectively):

. A trade union

. The Chamber of Commerce or Industry

. The Municipality

. The Governorship

* According the above, it consider that in Japan being a legal entity is a basic rule for

granting of a collective mark and in Iran the attesting the right of use of the collective

mark should be approved by the above mentioned competent authorities.

Requirements for Registration of a Trademark

In Japan, a person desiring a trademark registration first needs to satisfy the

formality requirements which is related to qualification of applicant, submission of

application and registration fees in addition to satisfy the substantive requirements

listed below:

1-A trademark of which the registration is sought needs to be distinctive to distinguish

goods or services bearing it from those provided by other parties.

2- A trademark of which the registration is sought does not fall subject to reasons for

unregistrability.

3- At the time of filing an application, goods or services with respect to which a

trademark is to be used need to be designated according to the “Classification of

Goods and Services.”

4- An application should be free from any violation of the “First to File Rule”

provision.

Then the applicant shall submit a request to the Commissioner of the Patent Office

includes the following Items; (section 5(1)):

17

i) the name and the domicile or residence of the applicant for a trademark registration;

ii) the trademark for which registration is sought;

iii) the designated goods or designated services and the class of goods or services as

prescribed by Cabinet Order

iv) any other necessary documents

In case where a person desires a trademark registration with respect of a trademark

consisting of three-dimensional shapes or a trademark consisting of only “standard

characters, the application needs to contain a statement to that effect (Section 5(2) and

(3). In order to file a trademark application, a fee needs to be paid as prescribed

(Section 76(2) and table fees thereof).

In Iran according the Article 1 of the Regulation of this Law, the application must be

lodged in Persian, duly dated, signed and shall comprise the following points:

1- Name, address and nationality of the applicant and the headquarters of his

enterprise.

2- Name and address of the applicant's attorney in Tehran if the application is

made through an attorney.

3- The line of trade, or the type of industry of the owner of the mark.

4- Date, place and number of registration at the country of origin, if the mark has

been registered outside Iran.

5- The residence in Tehran chosen by the owner of the mark.

6- The name and address of the person or persons in Tehran, who are competent

to receive legal notices and warnings.

7- Specification of goods for distinction of which the mark is being used, with a

mention of the requested classes, as per the Classification annexed Regulation.

8- A description of the Mark, and the special manner of its use, if any.

9- Amount of the registration fee collected.

10- A mention of the annexes.

Note: the name and address of applicants residing outside Iran must be written in

Latin characters, besides Persian, and must be registered and published in the same

characters.

18

The Article 2 of Regulation of this Law provides that the application must have the

following annexes:

1- Original or a certified copy of the power of attorney, if the application is made

through an attorney.

2- Ten specimen of the mark as it is used, plus additional specimen, to equal one

specimen for each additional class requested for registration.

3- A printing block for printing the Trade Mark distinctly. If the Trade Mark is

composed of one or several words, without a device or special stylized letters,

then the applicant is not obliged to annex a printing block.

4- If the mark has been registered outside Iran, submission of a copy of the

registration certificate, certified by the Office issuing it, in the original

language together with it’s translation is imperative.

5- For the collective marks a certificate issued by a competent authority attesting

the right of use of the trademark by the manufacturers of the goods covered by

the mark shall be submitted.

* With due attention to the above provisions it is consider that the Article 2(4) of the

Regulation of Iranian Law provides that in the case of the Registration of the

Trademark in outside of Iran, the submission of a copy of the registration certificate,

certified by the Office issuing it is imperative, while it is not applied by the Japanese

Trademark Law. (This provision is provided by the Article 6quinquies of Paris

Convention as well)

3- Examination System Principle of examination by examiner

In Japan, according the Section 14 of Trademark Law an examiner decides to

register a trademark based on a judgment reached through his examination to examine

its registratrability.

In Iran the same provision is applied for examination by examiner on the Article 7 of

Trademark Law.

19

Rejections

In Japan in the case of a trademark application falls into one or more of the following

categories, the Examiner shall issue a rejection:

1- Trademarks which cannot be registered pursuant to the provisions of Section 3,

Section 4-1, [Section 7-1, Section 7-3,] Section 8-2, Section 8-5, Section 51-2

(including its application in Section 52A-2), Section 53-2, or Section 25 of the patent

law as applied in Section 77-3 here in.

2- Trademark which are not registerable pursuant to the provisions of treaty.

3- Trademarks which do not meet the requirements of provisions in Articles 6-1 and

6-2 regarding the unity in Application.

4- Trademarks which are the same as or similar to the trademarks owned by others in

Paris Convention members or the WTO members and used on or in connection with

the same goods or services or similar goods or services to that original trademark right

owner if the trademark registration was filed, without reasonable justification, without

the consent to the original trademark right owner either by his current or past agent or

representative within one year of the original trademark application.

In Iran according the Article 9 of this Law the examiner may reject an application on

the following grounds:

1. When the mark is contrary to the law,

2. If the mark has already been registered in someone else's name, or if the similarity

or resemblance between the mark under application and a mark that has been

previously registered is to such an extent that it may confuse ordinary consumers and

persons without specialized knowledge. Similarity may be considered with due regard

to the appearance, pronunciation and meaning or any other characteristic likely to

mislead the ordinary consumer. According to the Note 1 of Article 5 the Regulation of

this law the Generic terms or Geographical names likely to mislead the consumers as

to the origin and quality of the goods shall not be granted registration as a distinctive

mark. If, during a period of 15 days from the filing date of an application it is found

that the application is not registerable, or that the applicant fails to complete the

20

application within the prescribed time limit, the Branch Office shall notify the

rejection to the applicant in writing, stating the reasons for such rejection.

* As the grounds for rejection results from the provided Articles by Law, and the

examiner after making a decision shall refer the related Articles thereof to refuse a

trademark, so there are specified grounds for rejection of a trademark in both laws

which are similar in some extent, but since Iran is not yet a member of a TLT and the

other International Conventions, in some cases such as Item 2 of the above mentioned

grounds for rejection of a trademark in Japan there is differences for rejection.

Decisions to Register

In Japan, when no reason to refuse a trademark application is discovered, the

Examiner shall make a determination that the application should be registered.

(Section16). Upon registration of a trademark the following particulars shall be

published in the Trademark Gazette (Section 18(3)).

1- Name and domicile or residence of the owner of the trademark right

2- Number and date of the trademark application

3- Contents of the trademark stated in the request

4- the designated Goods or Services

5- Registration number and date of the registration of the establishment

6- other necessary particulars

Only within two months from the publication of the Gazette containing the trademark

after registration any person may file with the Commissioner of the Patent Office an

opposition to a trademark registration. Also during the said period, the Commissioner

of the Patent Office shall allow public inspection of the application documents and

attachments.

In Iran according the Article 7 of the Regulation of the this Law after the

examination of trademark by the examiner where no reason found for refuse of the

application the Branch Office of Registration shall publish a notice in the Official

Gazette about any Trademark approved for registration in accordance with the

21

provisions of Article 5 of the Regulation of this Law, such notice shall include the

name and address of the proprietor of the mark, a reproduction of the mark with all its

distinctive elements and the specifications of the goods covered thereby. According

Article 9 of the Regulation of this Law if no opposition is filed within thirty days as

from the date of publication of the notice, the Branch Office of Registration shall

register the mark.

* According the provisions provided in above, consider that in Iran the application

will be published after the trademark approved by the examiner for grant of

application while in Japan after registration of a trademark it will be published in

trademark Gazette. It is worth mentioning that in Japan, after trademark application

are filed, they are published as a general rule for a prior search of trademarks while in

Iran there is no publication for unexamined applications. The other difference is that

the time considered for opposition in Japan is 2 months from the publication of

registered Trademark while in Iran it is provided 30 days after the Publication of

Trademark in Official Gazette and if no opposition filed within the said time, the

Registry shall register the mark.

4- Trademark Rights

Effects of Trademark Right Registration

In Japan a trademark right is a right to exclusively use a trademark with respect to its

designated goods or designated services (Section 25) and it comes into force upon the

registration of its establishment in the Trademark Register with respect to a trademark

for which a registration fee is paid within a prescribed period after an examiner’s

decision of registration. (Section 18)

In Iran, Article 2 and 14 of this Law provides that the right to use a trademark is

recognized only for those who have registered their trademark. Registered trademarks

will enjoy protection from the date of filing of the original application.

22

Term and Renewal In Japan the term of a trademark right is 10 years from the date of the registration of

its establishment and renewable upon a renewal request. (Section 19)

In Iran, Article 14 of the Trademark Law provides that the validity period of

registration of a trademark is ten years. However, the holder of the registration may

apply for renewal of this period. In this case the exclusive right to use the trademark

shall belong to the owner for another such period of 10 years. In the same manner,

each renewal will ensure the said right for another 10 years.

Registration of Renewals

In Japan, in order to renew a trademark registration, a renewal applicant shall file a

renewal request Form which contains the following information with the

Commissioner of the Patent Office. (Section 20)

1- Name and title and domicile or residence of the Applicant

2- Registration number of the registered trademark

3- other necessary particulars required by order of the Ministry of International

Trade and Industry.

The renewal request shall be filed within six months before the expiration of the prior

trademark registration. In the event the trademark registrant is unable to file for

renewal within the time frame specified above, the registrant may still file for renewal

within six months after the expiration of such time period. If the renewal application

cannot be filed within the prescribed time period for reasons beyond the control of the

Applicant, the application may still be filed within 14 days after those reasons have

ceased to exist but not more than two months after the prescribed time period.

In the event the trademark registrant does not file for renewal within the time period

prescribed above, the trademark right shall be deem to have terminated at the end of

the initial registration term. Upon registration of the renewal the relevant information

shall be published in the Trademark Official Gazette.

23

In Iran according the Article 20 of the Regulation of this Law up to six months after

the expiry of the validity period of the registration, the owner of the registration or his

legal representative may apply for renewal of the registration once every ten years.

The application must be submitted in two copies, signed by the proprietor or his legal

attorney and contain a print of the mark. Renewal of the registration shall be effect

after payment of the renewal fees. The renewal shall be recorded on the pages of

register reserved for the same mark and in continuation to the initial registration.

Should there be any changes in the mark at the time it is renewed, the provisions on

changes and amendments shall be fully complied in every aspect. No notice will be

published on the renewal of registration of a mark remaining unchanged.

If the duration of the validity of the mark expires, registration of the same mark by its

original owner or by others is subject to provisions and formalities of registration of

trademarks.

* In Japan by the provision of Restoration of trademark right another chance is

provided beyond the 6 months after expiration of Trademark time for the owner, if the

renewal application cannot be filed within the prescribed time period for reasons

beyond the control of the owner, while in Iran the renewal applicant only may apply

up to six months after the expiry of the validity period of the registration. Also no

notice will be published on the renewal of a mark remaining unchanged.

Transfer of trademark right

In Japan a trademark right may be transferred. In case where two or more items of

goods or services are designated with respect to it, a trademark right may be divided

and transferred with respect to each of them (Section 24bis). The transfer of a

trademark right takes its effects upon its registration in the Trademark Register.

In Iran according the Article 12 of the this Law a trademark may be assigned to a

third party, but such an assignment will be legally valid only when it is registered in

accordance with the provisions of the said Law. Also, according the Article 18 of the

regulation of this law a legally acceptable deed of the assignment, a power of

24

attorney, and the original Iranian certificate of registration must be annexed to the

application (which will be returned to the new proprietor of the mark after the official

endorsement is made on its reverse side).

Transfer of Collective Trademark Right In Japan when a collective trademark right is transferred, the collective trademark

shall be deemed to have been converted to an individual trademark right, except that

the owner of a collective trademark desires to transfer his collective trademark right,

he shall submit a statement to that effect and a document under Section 7(3) to the

Commissioner of the Patent Office at the time of an application for registration of the

transfer. (Section 24ter)

In Iran according the Article 1 of the said Law collective marks may be registered in

Iran as such. But since the scope of protection, formalities and requirements for

registration of a collective marks is the same manner as other trademarks or service

marks, so the requirements and formalities regarding changes in ownership, including

transfer of ownership, do not differ from that of the ordinary marks but if the assignee

itself is an organization fulfilling the conditions of an owner of a collective mark must

provide either a notarized certificate issued by the competent authorities attesting the

right of use of mark by the manufacturers for the goods covered by the mark, certified

by the issuing Office.

Right of Exclusive Use In Japan the owner of a registered trademark is allowed to, in principal, grant a “right

of exclusive use” with respect to the registered trademark (Section 30(1)). The owner

of a right of exclusive use is entitled to exclusively use the registered trademark with

respect to its designated goods or designated services within the scope of a contract

granting the right (Section 30(2)). A right of exclusive use may be transferred only

with the consent of the owner of the trademark right or in the case of inheritance or

other general succession (Section 30(3)).

25

Right of Non-Exclusive Use In Japan, the owner of a trademark right or the owner of a right of exclusive use with

respect to a registered trademark can, in principal, grant a “right of non-exclusive” use

(Section 30(4) and Section 77(4) of the Patent Law and Section 31(1)). The owner of

a right of non-exclusive use may use the registered trademark with respect to its

designated goods or designated services within the scope of a contract granting that

right (Section 31(2)). A right of a non-exclusive use may be transferred only with the

consent of the owner of the trademark right or in the case of inheritance or other

general succession (Section 31(3)).

The grant and transfer of a non-exclusive right takes its effects without their

registration, unlike a right of exclusive use.

In Iran according the Article 19 of the Regulation of this law the owner of the mark

or his legal representative may grant another person the license to use the registered

mark with respect to its designated goods or designated services within the scope of a

contract granting the right, this license will be valid if the License Agreement has

been officially recorded in Iran. Where the licensor and the licensee sign the

Agreement, its registration will be effected as per a written request of the owner of the

mark or his authorized representative or the licensee. A right of exclusive use may be

transferred only with the consent of the owner of the trademark right or in the case of

inheritance or other general succession.

Prior use In Japan where, from a time prior to the filing by another person of a trademark

application and without any intention of violating the rules of fair competition, a

person has been using in Japan the trademark in the application or a similar trademark

in respect of the designated goods or designated services in the application, or in

respect of similar goods or services, and, as a result, the trademark has become well

known among consumers as indicating the goods or services as being connected with

his business at the time of filing of the trademark application, such person shall have a

right to use the trademark in respect of said goods or services provided that he does so

continuously. The same shall apply in the case of a person who has succeeded to the

26

business concerned. The owner of the trademark right or of a right of exclusive use

may request the person having a right to use the trademark for his goods or services

with a suitable indication so as to prevent any confusion between the goods or

services connected with the owner's business and those connected with the other

person's business. (Section 32)

It is notable that according the Section 4(1) (11) trademarks which are identical with,

or similar to, another person's registered trademark applied for prior to the filing date

of the trademark application concerned and which are used on the designated goods or

designated services are not registrable in Japan. Where after registration, the

registered trademark has become a trademark falling under the said Section a trail

may be demanded for the invalidation of a trademark registration within 5 years and

in the case of the expiration of the said period Section 32 will be applied.

In Iran according the Articles 16(2), 20 of this Law, in the event, from a time prior to

the filing by another person of a trademark application, a person has been using in

Iran the trademark or a similar trademark in the application in respect of the

designated goods or designated services in the application, such person may file an

opposition, must enclose certified copies of documents he uses as evidence to

substantiate his claims, if the opposing party has not already registered the mark in his

own name, at the time of submission of his opposition, he must apply for the

registration of his mark and must pay all the registration and other associated fees in

advance.

In the notice, explicit warning must be made if the applicant complies with the

opposition, he must withdraw his application and in the case of the applicant dose not

complies with it, the objector may take an action to the Tehran Public Court. If the

objector proves his priority right to the mark for the reason of previous and

continuous use of the same mark, the court will order the mark to be registered in the

name of the opposing party. If the mark has already been registered in the name of the

applicant at the Deeds Registration Department, the Court will order the registration

to be annulled, and the mark registered in the name of the opposing party.

27

* With due attention to the above provisions, It is consider that the in Japan such a

person shall have a right to use the trademark in respect of said goods or services

provided that he does so continuously. The same shall apply in the case of a person

who has succeeded to the business concerned. However, the owner of the trademark

right may request the person having a right to use the trademark for his goods or

services with a suitable indication so as to prevent any confusion between the goods

or services connected with the owner's business and those connected with the other

person's business. But according the Iran Trademark Law the person who has already

used the Trademark with respect of designated goods and services continuously, for

the reason of the previous and continues use shall have the right to register the

trademark in his own name.

Infringement and Injunction

In Japan, the use of a trademark similar to the registered trademark by other parties

with respect to the designated goods or designated services of the registered

trademark is stipulated as an act “deemed to be an infringement” (Section 37) and the

owner of a trademark right may require a person who is infringing or is likely to

infringe his trademark right to discontinue or refrain from such infringement (Section

36). The owner is also entitled to claim damage and restoration of damaged business

reputation. The owner of a trademark right or of a right of exclusive use who is acting

under the preceding subsection may demand the destruction of the articles by which

the act of infringement was committed, the removal of the facilities used for the act of

infringement, or other measures necessary to prevent the infringement.

In Iran, according the Article 48 of this Law the Ministry of Justice shall regulate the

procedures for the collection of evidence, the seizure of goods produced as a result of

infringement of trademark; and Article 49 provides the payment of damages to the

person whose rights have been infringed. Such damages may include the losses as

well as the profits the person has been deprived of as a result of the said infringement.

The Articles 63 and 64 of the Regulation of the said Law provides that the owner of

any trademark may, upon order of the Magistrate of the Peace, take a detailed list of

such goods that they claim to be contrary to their rights acquired from their

Trademark registration. In litigations arising from the rights acquired by registering

28

trademarks, the claimant in civil actions or the plaintiff in penal actions may at any

time request from the legal Authorities trying the case to issue injunction order for

securing evidence or attachment of forged and imitated products or request to issue an

interim injunction order prohibiting manufacture or sale or importation of forged or

imitated products and the said Authorities shall comply with the said request.

* With regarding to the above mentioned articles it is consider that both systems has

provided provisions for the protection of a trademarks against infringement and the

owner of a trademark right or of a right of exclusive use may require a person who is

infringing or is likely to infringe the trademark right or right of exclusive use to

discontinue or refrain from such infringement. In Iran, laws and regulations

concerning the execution and implementation of Industrial Property rights provide

sanctions such as criminal as well as civil remedies of these rights. Regarding the

infringement of Trademark, the criminal sanctions provided in Articles 525 to 529 of

Islamic Penal Code. Both criminal and civil cases are taken in the public courts and in

these cases the public court of Tehran adjudicates such proceedings. In Trademark

Law no penalty is foreseen for the cases of infringing or counterfeiting industrial

property rights, and the competent court shall adjudicate at its own discretion

according to the nature of the crime committed. This may include imprisonment in

addition to confiscation of the concerned products or goods.

5- Opposition System

Opposition to Registration

In Japan, only within two months from the publication of the Gazette containing the

trademark after registration any person may file with the Commissioner of the Patent

Office an opposition to a trademark registration on the grounds that the trademark

registration falls under any of the under mentioned paragraphs. In such an event, if

two or more items of designated goods or designated services are covered by the

trademark registration, the opposition may be filed with respect to each of such

designated goods or designated services:

29

(1) where the trademark registration has been effected in respect of a trademark which

is not distinctive (Section 3(1));


falls within one of the unregistrable reasons (Section 4(1));


violates the first to file rule (Section 8);

(4) where the trademark registration has been effected in respect in a trademark

contrary to prohibition of re-registration in the cancellation of registration (Section 51,

Section 52bis, Section53)

(5) where the trademark registration has been effected contrary to the provisions for

foreigners’ right (Section 25 and 26 of Patent Law)

(6) where the trademark registration has been effected contrary to the provisions of a

treaty.

The examination of an opposition is executed by a collegiate body composed of three

or five trail examiners. Where a ground is found for the opposition a “ruling of the

revocation of a registration” is made. Where no ground is found for the opposition, a

“ruling of the maintenance of a registration” is made. Where a “ruling of the

revocation of a registration” is made, an action may be taken against it to the Tokyo

High Court.

In Iran according Article 16 of Trademark Law the following persons may file an

opposition against an applied for or already registered mark:

1. Persons who consider the trade mark to be their own.

2. Persons whose marks are confusingly similar to the subject mark in a manner that it

will confuse ordinary consumers. In either of the above two cases, if the opposing

party has not already registered the mark in his own name, at the time of submission

of his opposition, he must apply for the registration of his mark and must pay all the

registration and other associated fees in advance.

According the Article 17 of this Law if the opposition is filed before registration of

the mark, the opposition must be served upon the applicant in the manner and within

the period specified in the said Law Regulations. If the applicant does not comply

30

with the opposition and does not withdraw his application the opposing party may

refer the matter to the Lower Court of Tehran within the period of time specified in

the said Regulations. In the case of the opposition is filed against a registered mark,

the opposing party must directly file suit with the Tehran Lower Court and must

request the cancellation of the registration.

Opposition process

In Japan, a person filing an opposition to a trademark registration shall submit a

written opposition to the Commissioner of the Patent Office stating the following:

(Section 43 quarter (1))

(i) the name and the domicile or residence of the opponent and his representative;

(ii) an identification of the trademark registration concerned in the opposition;

(iii) the grounds of the opposition and an indication of the supporting evidence.

(2) An amendment of the written opposition submitted under the preceding subsection

shall not change the gist thereof. However, this shall not apply to an amendment

made to the matter prescribed in Paragraph (iii) of the preceding subsection before a

lapse of 30 days after the expiration of the time limit prescribed in Section 43bis.

(3) The Commissioner of the Patent Office may, for the benefit of a person residing in

a place that is remote or difficult of access, extend upon request or ex officio the

period prescribed in the preceding subsection.

(4) The trial examiner-in-chief shall transmit a copy of the written opposition to the

owner of the trademark right.

In Iran, according the Article 51 of the Regulation of this Law the Oppositions to

marks which is not yet registered must be submitted in writing to The Branch Office

include the following information:

1. His name, profession and address in Tehran; and

2. Indication of all the evidence and proof, according to which he deems himself

justified in the opposition.

Whenever possible, the party filing the opposition must enclose certified copies of

documents he uses as evidence to substantiate his claims. (Article 52 of Regulation)

31

Where the opposition is based on the right of ownership that the party filing the

opposition claims on a trademark which is applied for by another person, without that

trademark having been registered in Iran in his name, his opposition will only be

accepted if he files an application for registration of the said trademark in accordance

with the Trademark Law. (Article 53 of Regulation)

Within ten days after receipt of the letter of opposition, The Branch Office shall notify

the same to the applicant. If the applicant complies with the opposition in writing his

application shall be withdrawn and the same shall be communicated to the party filing

the opposition in writing. (Article 54 of Regulation)

Sixty days from the date of serving of the notice of opposition to the applicant the

party filing the opposition must refer to the Tehran Court unless within this period the

applicant complies with the opposition in accordance with the previous Article.

Tehran courts shall deal with all civil or criminal cases related to the registration of

trademarks or patents even if in the case of criminal cases, the offence has taken place

outside Tehran. (Article 46 of this Law)

If the party filing the opposition fails to refer to the Tehran Court within the period

specified in the above article, The Branch Office shall take note of a statement made

by the Tehran Court that no petition has been received from the party filing the

opposition and will proceed with the registration of the trademark in the name of the

applicant.

* To achieve its purpose to ensure the credibility of registration and protect public

interests, the Japanese Trademark Law stipulates an opposition system allowing an

opposition to a trademark after it is granted a trademark right. The post-grant

opposition system is designed to allow any third party to file an opposition to a

trademark right within a certain period of time after the registration of its

establishment and, if such opposition is filed, the Patent Office to examine the

adequacy of its disposal of registration and correct defects if any. The objective is to

enhance trust and confidence in trademark registration for equitable public interest,

whereby the Japanese Patent Office checks its own decisions on trademark

registration and corrects itself. This system has been introduced to accelerate granting

32

of trademark rights, and supersedes the conventional pre-grant opposition system.

While the Iran trademark law provides Administrative opposition and Legal

opposition which administrative opposition related to the marks which is not

registered yet and legal oppositions dealing with the registered marks and actions

taken after administrative oppositions.

6-Trail System

1-Trial against examiner's decision of refusal

In Japan, a person who is dissatisfied with a decision of refusal may demand a trial

within 30 days from the transmittal of the examiner's decision. The examination of a

demand for a trial is conducted by a collegial body composed of three or five

examiners. Where the ground is found, the trial examiners shall make a decision to

registration, this trademark is to be registered. Where no ground found, the trial

examiners shall make a decision for denying the demand. In the case of the applicant

is dissatisfied with the decision may take an action to the Tokyo High Court. (Section

44)

In Iran according the Article 7 and 8 of this Law if the applicant is dissatisfied with

the decision of refusal, he may file a petition with the Head of the Lower Court of

Tehran within ten days from the date on which the rejection is served upon the

applicant. The Court’s verdict is also subject to appeal. If the application for

registration is approved by the officer in charge of the special branch, or if after

rejection of the application, a final judgment for registration of the application is

issued, the Tehran Department of Deeds Registration will be required to register the

mark and issue an official registration certificate within 15 days as of receipt of a copy

of the approval, or court’s verdict.

2-Trial against ruling to decline amendment

In Japan, A person who is dissatisfied with a ruling to decline an amendment under

Section 16bis (1) may demand a trial thereon within 30 days from the transmittal of

the ruling. The examination of a demand for a trial is conducted by a collegial body

33

composed of three or five examiners. Where the ground is found, the trial examiners

shall make a ruling, this application is accepted. Where no ground is found, the trial

examiners shall make a ruling declining amendment. Where a ruling declining

amendment is made, in the case of the applicant is dissatisfied with it, can take an

action to the Tokyo High Court. (Section 45)

In Iran, according the Article 8 of the Regulation of this Law any amendments made

by the applicant after the publication of the first notice must be submitted through a

separate application. This application shall be examined in the manner set out in

Article 5 of the said law. If accepted by Trademark Office, the said amendment shall

be brought to the public notice by the publication of a new notice. Otherwise, the

Article 11 of this Law and 14 it’s Regulation provides that any change or alternation

in the mark, or goods covered by the registered trademark may apply by the applicant,

through separate application and will be examined separately. Therefore, no trial

request on ruling to decline an amendment.

3-Trial for invalidation of trademark registration

In Japan, Any interested party may demand for the invalidation of a trademark

registration. When a trademark right is effective or even after the extinguishment of a

trademark right, the demand for trail to this trademark may be filed. In principle, the

period of exclusion of the demand for this trial is five years from the date of

establishment of registration. The examination of a demand for a trail is conducted by

a collegial body composed of three or five examiners. Where the ground is found, the

trial examiners shall make a decision of invalidation, this trademark registration is to

be invalidated. Where no ground is found, the trial examiners shall make a decision

denying demand. Where a decision denying demand is made, the applicant can take

an action to the Tokyo High Court. (Section 46)

In Iran according the Article 22 of this Law those who have not filed an opposition

against registration of a mark within three years as from the registration date of the

mark, can not file such opposition after expiry of the said period unless they can prove

that, on the date of registration, the applicant was aware that the mark had been

continuously used by the opposing party, or by another person who has transferred the

34

trade mark to the opposing party. If the applicant can then prove that the opposing

party was aware of the registration during the said three-year period, the opposition

will be rejected.

4-Trial for cancellation of trademark registration

In Japan, any interested party may demand a trail for cancellation a trademark

registration except for a trademark registration illegal made by an agent, etc. When a

trademark right is effective, the demand for trial to this trademark may be filed. The

trademark owner may demand a trial for cancellation of the trademark registration

illegal made by an agent. Examination of a demand for a trial is conducted by a

collegial body composed of three or five examiners. The reasons for cancellation are

non-use for three years or more, due to illegal use by trademark owner of the right of

exclusive use or non-exclusive use, due to illegal registration by representative, etc.

where the ground is found, the trail examiners shall make a decision of cancellation,

this trademark registration is to be cancelled. Where no ground is found, the trial

examiners shall make a decision denying demand. Where the decision denying

demand is made, the applicant can take an action to the Tokyo High Court. (Section

50, 51, 52bis, 53bis)

In Iran according the Article 13 of the Regulation of this Law if a trademark

registered for products set forth for in Article 1 of this law is not commercially used in

Iran or outside Iran either by the owner of the mark or his legal representative,

without a plausible reason within three years from date of registration, any interested

party can refer to the Court of First Instance for its cancellation. The Article 61 of the

said Regulation stipulates that any person who wishes to request cancellation of

registration of a trademark registered in Iran must lodge a petition at the Court of First

Instance in Tehran. A cancellation action may be filed within a period of three years

following the registration date of a trademark.

* A trademark application leads to a decision of registration or refusal through an

examination or refusal through an examination conducted by an examiner. A decision

which contains defects itself or becomes to constitute defects due to later arising

factors (such as, non use or the illegal use of a registered trademark) runs counter to

35

the interests of applicants or the public interests if left untouched as it is. To cover

such case, the Japanese Trademark Law provides for a trail system to allow a disposal

with such defects and inadequate situation arising there from to be corrected and

resolved, so as to protect the interests of applicants or the public interests.

7- Defensive Marks

I. Registrability of defensive mark

The owner of a trademark right may, when his registered trademark in respect of

goods and services has become well-known among consumers as indicating the

designated goods and services as being connected with his business and when the use

of the registered trademark by any other person in respect of goods and services than

the designated goods and services covered by the registered trademark and goods

similar thereto or services similar to the designated goods and services is likely to

cause confusion between such goods or services and the designated goods and

services in connection with his business, obtain a defensive mark registration of a

mark identical with the registered trademark with respect to goods or services for

which such possibility of confusion exists.(Section 64(1), (2))

A right based on defensive mark which is dependent on its capital trademark is

transferred together with the capital trademark when the latter is transferred. When its

capital trademarks becomes extinguished or is divided, a right based on a defensive

mark becomes extinguished. (Section 66)

II. Purpose of Defensive Mark Registration System

The defensive mark registration system allows the owner of a registered trademark

well recognized among consumers to indicate goods or services connected with the

trademark owner’s business to register a mark identical with the registered trademark

with respect to goods or services not similar to the designated goods or designated

services of the registered trademark, with respect to which the use of the trademark by

other parties may cause confusion over the source of goods or services. Thus, the

system is designated to protect the business reputation of the owner of a well-known

36

trademark. If the use of a well-known trademark by other parties is allowed simply

because it does not constitute an infringement, it may damage the business reputation

of the trademark owner who has built up it through great efforts.

It should be reminded that the system of defensive mark has enforced in Japan since

1960 and at the present it is unique in Japan. Although not completely impractical, the

system of defensive mark has not been widely used. A peak was reached in 1982 with

513 registrations.

Iran Trademark Law dose not provide additional protection for defensive marks

which a system is applied for a higher protection of well known marks. However

according to this Law the owner of a trademark right may apply for registration of

addition of classes or addition of goods or services to the same trademark in other

classes which the use of them by other parties may cause confusion over the source of

the goods or services. Nevertheless the procedure for registration of these marks is the

same as regular marks in Iran. (Article 11 of the Law and 14 it’s Regulations)

8- Publication

Trademark Gazette In Japan, when a trademark application has been filed, the Commissioner of Patent

Office shall publish the application. (Section 12) Upon registration of a trademark the

provided particulars in the said Law shall be published in the Trademark Gazette

according Section 18(3). Also, Section 75 of this Law provides that the Patent Office

shall publish the Trademark Gazette, which contains the following Items:

(i) a decision that a trademark application is to be refused, or a abandonment,

withdrawal or declining of an application for trademark registration or for defensive

mark registration, which is made after the applications having been laid open;

(ii) succession to rights resulting from an application for trademark registration, which

is gained after the application having been laid open;

(iii) amendments for designated goods or designated services stated in an application

or for trademarks for which trademark registrations are sought or marks for which

37

defensive mark registrations are sought, which are made after the applications having

been laid open;

(iv) extinguishment of a trademark right (excluding extinguishment due to the

expiration of a term or falling under Section 41bis(4));

(v) an opposition to a trademark registration or a demand for a trial or a retrial or

their withdrawal;

(vi) final and conclusive ruling on an opposition to a trademark registration and final

and conclusive decision of a trial or a retrial;

(vii) a final judgment in an action under Section 63(1).

In Iran, according the Article 7 of the Regulation of this Law the Branch Office for

Registration shall publish a notice in the Official Gazette about any trademark

approved for registration in accordance with the provisions of Article 5 including the

provided particulars in the said Article. Also, the Article 13 of this Law provides that

the registration of a trademark, or alterations thereof, will be published in the Official

Gazette within fifteen days from the date of registration.

Article 12 of the Regulation of this Law stipulates that after registration of each mark

the Branch Office for Registration shall published all official notices containing all

the particulars set forth in Article 11 of this law. All changes and Licenses are also

published once, after the recordal is completed.

* The publication of application is made in the Trademark Gazette, in order to protect

the trademarks during the period from application for trademark registration to the

establishment of the trademarks as an early protection of trademarks. In principle, all

the applications for trademark registration will be disclosed. Though the publication

of application has no legal effects, it enables the provision of information regarding

the applications and may be utilized as a document to be presented in case of warning

pecuniary claims.

38

9- Re-Classification System

I. Purpose of Registration of Re-Classification of Goods

Since the classification based on the Trademark Law of 1899 to the present

classification based on the International Classification, the Japanese classification of

goods has been modified four times with five classifications now in effect.

With these different “classification” in effect, a search conducted by a person desiring

a trademark application trademarks of other persons conflicting with his own

trademark naturally widens in scope and increases a burden. Particularly, trademarks

registered with respect to goods designated under “so-called comprehensive

conception” have the scope of their rights vague to third party other than the owner of

the trademark right and the Patent Office.

It is the “re-classification system” that has been adopted to reclassify the designated

goods of trademarks registered under the indigenous Japanese classifications

(Classification of Goods effective under the Trademark Laws of 1899, 1909, 1921 and

1959) into classes based on the international classification of goods (which is

effective at the time of filing an application for the registration of re-classification) so

as to resolve the problem as explained above and promote the smooth operation of the

Japanese trademark system.

II. Registration of Re-Classification of Goods

The owner of a trademark right resulting from a trademark application filed before

April 1, 1992 has to request the registration of a re-classification of the designated

goods within a period from six months before the expiration of his trademark right to

the end of one year after the expiration in accordance with a scope and the start of

acceptance of requests designated by the Commissioner of the Patent Office after the

enforcement of a law concerning the re-classification of designated goods (April 1,

1998).

With regard to an application for the registration of re-classification of the goods of

which the formal examination has been completed, an examiner examines whether or

39

not the application satisfies the substantive requirement; the designated goods to be

registered for re-classification have not been substantively beyond the scope of the

designated goods of trademark right related to the application and the goods have

been designated in accordance with the classification of goods and services as of the

date of filing the application.

Where a reason for refusal is found as a result of the examination, the examiner

notifies the reason for refusal to the requestor and give him an opportunity to submit

arguments, designating an adequate time limit. Where a statement of arguments is not

submitted or the reason for refusal not overcome by a statement of arguments

submitted, a decision of refusal is made. Where no reason for refusal is found, a

decision of the registration of a re-classification is made.

Where a decision of the registration of a re-classification is made, the re-classification

of designated goods with respect to a registered trademark right is registered, taking

its effects upon that registration. When the registration of a re-classification of goods

is made, the prescribed matters concerning the trademark right is published in the

Trademark Gazette.

In Iran, the applied domestic classification is under the annexed Table of Goods and

Services provided by the Regulation of the Trademark Law as amended in 1958,

which includes 36 classifications. In this classification from class 1-34 is reserved for

goods that follows International classification system, class 35 is reserved for services

and can be prepared to the applicant’s particular needs and class 36 is reserved for

goods which is not mentioned in other classes. The classification used before the

present, was a national one which comprised 80 classes. It was a part of Iranian

Trademark Act dated 21st June 1931. However, the new classification (8th version of

Nice Classification) has just been approved by the Judiciary Power and will soon

come into force. Nevertheless, the IP Office re-classify the goods and services of the

marks, at the time of renewals request for trademarks according to the Article 21 of

the Regulation of the said Law. The trademarks automatically re-classify based on the

designated goods and services when recording the renewal of a prior registration

amending the class or classes covered accordingly both in Register and the Certificate

of renewal registration of trademark.

40

10- Protection of Well-Known and Famous Trademarks

A list of the top ten ranked trademarks with respect to brand value was published in

the September 1997 in the economic journal, “Financial World”. According to this list,

“COCA-COLA” and “MARLBORO”, “IBM” and “SONY” are globally famous

trademarks recognized by people around the world since their goods and services are

distributed throughout the world.

In recent years, social and economic structures have become increasingly global. The

well-known “CNN”, a 24-hour television broadcasting station and “DHL”, the

package delivery service that appeared accompanying these changes and have become

famous throughout the world, represent trademarks that have become deeply etched in

the minds of people everywhere. In the field of computers that has rapidly expanded

the range of users, it is no exaggeration to say that “MICROSOFT”, “INTEL”,

“UNIX” and other well-known software trademarks have become famous trademarks

on a global scale.

In addition, the trademarks of sponsors that are prominently displayed at global

sporting events such as the Olympics and Asian Games are at times seen by billions of

people, while the various trademarks advertised through global communication

networks such as “CNN” and Internet rapidly attain popularity accompanying supply

of their goods or services, enabling them to become well-known of famous

trademarks.

The majority of these trademarks surpass the boundary of a trademark known in only

a single country as their markets continue to expand, eventually being recognized as

internationally well-known trademarks having the entire world as a single market. On

the other hand, in contrast to these trademarks, trademarks that continue to provide

numerous consumers with high-quality goods or services over the course of many years while continuing to maintain deep-rooted trust become well-known of famous

trademarks within a fixed range of geographical area.

41

Japanese Law

Within the laws of Japan, In particular the Trademark Law, its related laws and

regulations and the Unfair Competition Prevention Law have been enacted with

respect to protection of well-known and famous trademarks. The Trademark Law was

revised in 1993 and 1996, and is already considered to be completely compatible with

the TRIPS Agreement. In addition, the Unfair Competition Prevention Law was

completely revised in 1994, and its complete accommodation of the TRIPS

Agreement has also been completed.

(a) Trademark Law

Provisions which relate to protection of well-known and famous trademarks have

existed in the Trademark Law since long ago in Japan (Such provisions have been in

existence since the 1921 law which were to prohibit a registration of identical or

similar trademark by an unauthorized third party. Such provisions are believed to have

already been existed in Japanese Trademark Law before or around 1925 when the

Hague text of the Paris Convention was introduced) and the requirements for adopting

these provisions were interpreted rather flexible so as to achieve the very purpose to

prohibit any unfair practice in this field so that they would be used more effectively

until they reached their present form.

“Section 4 (Unregistrable trademarks)

Notwithstanding the preceding section, trademark registration shall not be effected in

the case of the following trademarks:

(x) trademarks which are well known among consumers as indicating the goods or

services as being connected with another person's business, and trademarks similar

thereto, and which are used in respect of such goods or services or similar goods or

services;

(xv) trademarks which are liable to cause confusion with goods or services connected

with another person’s business (other than the trademarks mentioned in paragraphs (x)

to (xiv));

42

(xix) trademarks which are well known among consumers in Japan or abroad as

indicating the goods or services as being connected with another person’s business,

and trademarks identical with or similar thereto, and which are used by the applicant

for unfair intention (intention to gain an unfair profit, intention to cause damage to

such another person and other unfair intentions - hereinafter the same) (other than

the trademarks mentioned in each of the preceding paragraphs) in respect of such

goods or services.”

“Section 64 (Registrability of defensive marks)

(1) the owner of a trademark right may, when his registered trademark in respect of

goods has become well-known among consumers as indicating the designated goods

as being connected with his business and when the use of the registered trademark by

any other person in respect of goods other than the designated goods covered by the

registered trademark and goods similar thereto or services similar to the designated

goods is likely to cause confusion between such goods or services and the designated

goods in connection with his business, obtain a defensive mark registration of a mark

identical with the registered trademark with respect to goods or services for which

such possibility of confusion exists.

(2) the owner of a trademark right may, when his registered trademark in respect of

services has become well known among consumers as indicating the designated

services as being connected with his business and when the use of the registered

trademark by any other person in respect of services other than the designated services

covered by the registered trademark and services similar thereto or goods similar to

the designated services is likely to cause confusion between such services or goods

and designated services in connection with his business, obtain a defensive mark

registration of a mark identical with the registered trademark with respect to services

or goods for which such possibility of confusion exists.”

The provision of Article 4-1-19 in particular is newly introduced at the time of the

1996 revision of Japanese Trademark Law. It is considered to be the most progressive

provision in this field throughout the world with respect to decreasing troublesome

requirements and conditions for the true owners of such well-known and famous

43

trademark rights. In other words, even in cases where there is little awareness in Japan,

of such trademark that has actually been recognized as well-known and famous

trademarks in several overseas countries, the said provision serves to protect these

trademarks as well. This revision is extremely effective in cases of piracy of well-

known of famous trademark overseas and in cases when the Patent Office and other

authority do not have the information regarding the existence of such kind of well-

known or famous trademark owned by foreign trademark owner.

The provision of Article 4-1-10 serves to reject a third party’s unauthorized

application of copied trademark and invalidate its registration in case that the covered

goods are identical or similar to goods or services to which the well-known trademark

has been used by its true owner. This Article 4-1-19 is similar to Article 6bis of the

Paris Convention, but Japanese provision does not require that a well-knownness of

the trademark be established in Japan. Similar to the recognition in the court decisions

for the “Maxim de Paris” restaurant cases in the United States and Ireland, this is

because if the trademark for goods or services has been recognized as well-known or

famous overseas, even though it may not be used actively in Japan, there are cases in

which the same trademark has been recognized as being substantially well-known in

Japan as well through travelers or medias of newspapers and magazines.

The provision of Article 4-1-15 attempts to protect well-known and famous

trademarks over a broader scope of goods or services than those of Article 4-1-10. It

resembles the provision stipulated in Article 16(3) of the TRIPS Agreement in that the

scope of goods or service is not required to fall within a mutually identical or similar

scope. In other words, the purport of this provision is not to register or protect

trademark for which there is a risk of mutual confusion even in the case of trademark

relating to dissimilar goods or services. This provision is applicable to famous

trademark and extremely well-known trademark, and there is naturally no need for

famous or well-known trademark to already be registered in Japan with respect to said

goods or services.

As was previously explained, the provision of Article 4-1-19 which was introduced in

the revision of 1996 is applicable for the protection of well-known or famous

trademark if the owner of this trademark succeed to prove the well-knownness or

44

famousness recognized either in Japan or among several countries overseas outside of

Japan. However, when applying this provision, it is also necessary to prove that the

third party’s application should have been filed with a bad faith with intention to

receiving unlawful interests, intention to inflict damages on another person or other

unlawful objectives.

According to the provision of Article 64, the owner of a registered trademark right

may, when his registered trademark (for instance, the automobile manufacturer

registered a mark in respect of automobile) has become well-known among

consumers in respect of the covered goods, obtain a defensive trademark registration

of a mark identical other the basic trademark in respect of goods or services for which

there is possibility of confusion, and a registration of the defensive trademark shall

not have sanctions to be cancelled with the ground of non-use.

The merit of this registration is firstly that it is possible to surmise that the basic

trademark should have been recognized as a well-known or famous trademark in

Japan, and secondary, once it is registered, there is no obligation to use it, so a third

party’s application or use of an identical or extremely similar trademark shall be

blocked or prohibited as far as the trademark is in conflict and the goods or services

are also in conflict with the goods or services covered by the defensive registration. In

this sense, this system exists for the purpose of protecting well-known and famous

trademarks.

It should be noted that in the case, for example an automobile manufacturer has

registered a basic trademark relating to clothing as a defensive trademark, the basic

trademark of that automobile manufacturer is protected with respect to clothing as

well. Accordingly, it is said that in the case a third party commences the use of a

trademark that is identical or extremely similar to the registered defensive trademark

covering the clothing, the owner of defensive trademark take an action for injunction

against the third party’s unauthorized use as an infringement of the defensive

trademark registration.

On the other hand, if the owner has not registered the basic trademark as defensive

trademark, he can not take such an infringement action but may take action for

45

injunction under the Unfair Competition Prevention Law, if it is applicable to such

individual case.

(b) Unfair Competition Prevention Law

In the current Unfair Competition Prevention Law, Article 2-1-1 and Article 2-1-2 are

extremely effective for protection of well-known and famous trademarks. Normally,

in order to enjoy a protection of trademark (widely known or well-known trademark),

a trademark owner shall register his trademark under the Trademark Law, then he can

take such an action against an infringement for an injunction, demand compensation

for damages or other actions or take action for criminal prosecution as an

infringement of registered trademark right under the Trademark Law, but in the case

that a registered right to trademark does not exist, it is not possible or almost

impossible to rely on the Trademark Law, then in that latter case, the owner of

trademark can rely on the Unfair Competition Prevention Law.

“Article 2. (Definitions)

The term “unfair competition” as used in this Law means any one of the following:

(1) The act of using an indication of goods, etc. which is identical with or similar to

another person's indication of goods, etc. (meaning the indication of goods or business

such as a name, trade name, mark, and goods container or package related to a

person's business; hereinafter the same) which is widely recognized among users, or

act of transferring, delivering, displaying for the purpose of transfer or delivery,

exporting, importing goods on which such indication of goods, etc. is used, and

thereby causing one's goods or business to be confounded with another person's;

(2) The act of using, as one's indication of goods, etc., an indication of goods, etc.

which is identical with or similar to another person's well-known indication of goods,

etc., or act of transferring, delivering, displaying for the purpose of transfer or

delivery, exporting, or importing goods on which such indication of goods, etc. is

used;”

46

Acts falling under the provision of Article 2-1-1 are prohibited as unfair competitive

acts under the Unfair Competition Prevention Law, then the well-known trademark

and famous trademark are protected in accordance with the relief provisions stipulated

in the Unfair Competition Prevention Law.

The subject to be protected by applying this provision is the owner of the well-

recognized indications of goods or services; i.e. a well-known trademark, trade name

or the like. Requirements for receiving relief as stipulated in this Law consist of

having prove that (1) the trademark or other indication of goods or services must be

recognized as a well-known among the consumers and (2) a confusion has occurred or

there is a risk of confusion occurring.

The provision of Article 2-1-2 stipulates that an owner of a famous trademark or other

famous indication of goods or services is eligible to receive the same relief as in the

case of Article 2-1-1 in the case that another person has used without consent, a

famous indication of goods or services (including famous trademark) or any

confusingly similar indication thereto.

The provision of Article 2-1-2 attempts to provide broad protection for famous

trademark, or other famous indication, and is also applied to prevent so-called “free

rides” and “dilution”. Further it is noted that a famous trademark is also protected

under Article 2-1-2 when it has been recognized only in overseas countries, but even a

famous trademark recognized only in small part of region in Japan, it is not protected

under this provision. Owner of famous trademark attempting to receive relief based on

this provision must prove that his own trademark (or indication of goods or services)

is recognized to be famous. However, in applying this provision, there is no need to

prove that confusion has occurred of there is a risk of confusion occurring.

Criteria for Determining Well-known and Famous Trademarks

Evaluation Standards

There are also no provisions in Japanese Law that indicate specific evaluation

standards. On the other hand, as was previously mentioned, it can be considered to

47

distinguish between the terms “well-known” and “famous”, which is not definitely

affirmed. In comprehensively looking over practices reflected from the Patent Office

and Court decisions, practices on this issue in Japan are considered to be as indicated

below:

Whether or not a trademark is well-known should be evaluated comprehensively

according to the type of goods or services, the actual trade channel of transactions, the

trade practices, the modes of advertising and promoting activities and the modes of

trademark use and so forth. Further breaking down the substantial contents and

looking at them with the view of analysis hereinafter.

With respect to the geographical jurisdiction, it seems not always necessary that a

trademark be well-known throughout the entire country, but it only need be proven

that the trademark recognized as well-known in at least a part of the country. However,

in the case of famous trademarks, a trademark must be very well-known throughout

entire Japan, in principle, but in some special instances, a trademark is able to be

protected, for example, under Article 4-1-19, in other words, a trademark does not

always have to be famous in Japan, but it is required to be recognized famous or very

well-known globally overseas. It is generally thought that it is not sufficient if the

famousness of trademark is limited to only one region even if that region is in Japan.

Nextly, there is no fixed standard with respect to the term of use as well, but it is

naturally desirable that use for a somewhat long period of time as well as extensive

publicity activities or the like are necessary. However, since there are cases in which

the goods as well as the trademark may become popular and demanded in a short

period of time such as in the case of “Rubic Cube”, which temporarily was extremely

popular and had a short life cycle, whereby, in the same way, the goods (or services)

bearing a particular trademark will be sold in large volume for a short time or the

goods (or services) can be marketed through large scale publicity in a short time,

accordingly, it is not easy to stipulate standards pertaining to the term of a trademark

use that can be applied comprehensively.

48

Next, the time of determining whether or not a trademark becomes well-known is the

time when a final decision is rendered for an examination of a defensive mark

application, for opposition case or trial for invalidation case and so forth. The time for

determining in the course of a legal action (law suit) is the time when the bearing is

completed in the civil procedure for the injunction cases, and with respect to a legal

action demanding for damages, is the time when the subject tort was committed.

Finally, examples of evidential materials for the purpose include materials showing

marketing activities (sales volume, monetary sales amount, etc.), business scale

(company size, number of employees, number of stores, annual turnover etc.),

distribution of posters, advertising through newspaper, magazine or television, results

of storefront surveys, a fact of receiving a recommendation from superior goods

recommendation association and so forth, and a certificate of the fact by a public

organization. In not only the case of a famous trademark, but in normal cases as well,

there are many times when a vast amount of evidence is required to show advertising

activities, marketing status and so forth (Note 3).

Whether a mark is distinctive and famous, a court way consider the factors such as:

(1) the degree of inherent or acquired distinctiveness of the mark;

(2) the duration and extent of use of the mark in connection with the goods or services

(3) the duration and extent of advertising and publicity of the mark;

(4) the geographical extent of the trading area in which the mark is used;

(5) the channels of trade for the goods or services with which the mark is used;

(6) the degree of recognition of the mark in the trading areas and channels of trade of

the

mark’s owner and the person against whom the injunction is sought;

(7) the nature and extent of use of the same or similar marks by third parties; and

(8) the existence of a registration

Distinction in the Trademark Law and Unfair Competition Prevention Law

The Japanese Trademark Law and Unfair Competition Prevention Law can be

considered to distinguish between “well-known trademarks” and “famous

49

trademarks” although used terms are note clearly distinguished therein. For example,

Article 4-1-10 of the Trademark Law is targeting a protection of “well-known

trademarks”. Even in the case that confusion with a “well-known trademark” is

occurred within the scope of same or similar goods or services, it is naturally

occurable with a “famous trademarks”, indeed, within the same or similar scope of

goods or services.

On the other hand, in the case of Article 4-1-15, the object of this provision is to

protect the “famous trademark” from confusion with third party’s trademark occurred

in the scope of dissimilar goods or services and the target of this item should be

“famous trademarks”. Moreover, based on the same purport, since the defensive

marks of Article 64 are also based on the supposition of confusion occurable in the

scope of dissimilar goods or services, this is also believed to be targeted at “famous

trademarks”.

Registration or Actual Use as a Condition for Protection

The Paris Convention and TRIPS Agreement as well as national trademark laws in

common law countries and advanced countries including Japan have already

recognized the importance of suitable protection of well-known and famous

trademarks. The specific conditions for the protection of trademarks are not expressly

stipulated, but it is generally recognized that these well-known and famous

trademarks must be protected even if they are not registered.

According to Japanese Law, there is no express indication, but it has been interpreted

that the existence of trademark registration is note necessary and as far as the actual

use is concerned, it is considered that the actual use of trademark is to be essential to

establish well-knowness or famousness of the trademark in principle, so an actual use

at least in anywhere should be necessary but the evaluation on the popularity of

trademark shall be conducted on a case-by-case basis.

According to the interpretation of Article 4-1-19, for example, the trademark which

has been actually used and also recognized as a well-known or famous trademark in

several countries other than Japan, even though it has not used in Japan yet, can be

50

protected as a well-known or famous trademark under Japanese Trademark Law.

Therefore, it would be noted that an actual use within Japanese jurisdiction is not an

absolute requirement under Japanese Trademark Law.

Under the Unfair Competition Prevention Law in Japan, there is no express provision

regarding this matter as well, but it is believed that this point shall be evaluated and

determined on a case-by-case basis in the same manner as the Trademark Law.

At present, more than 600 well-known and famous trademarks in Japan have been

listed up in both Japanese and English. These are consisting of the well-known or

famous trademarks duly recognized in the decisions or judgments of past opposition

cases, trial case and court cases as well as the registered defensive trademarks all of

which been selected by the Examiners and Trial Examiners at the Patent Office,

therefore these selected well-known or famous trademarks may be considered to be

reliable reference materials.

Name Protection

51

Chapter III

Administration Procedure of Japanese Trademark Registration System

Application

Those who desire the grant of trademark registration are required to submit an

application to the Commissioner of the Patent Office using online or in writing.

Payment of an application fee is required according the table of fees.

Those who do not have domicile or residence or an establishment in the case of legal

entity in Japan must undertake the procedure through a trademark agent having the

domicile in Japan.

Publication of application

After trademark applications are filed, they are published as a general rule and gazette

is issued on CD-ROM. Publication of application are used for search of prior

trademarks as well as information provision about trademark application by other

parties. The gazette can also be used as a written statement submitted as warning to a

party suspect of regarding infringement, one of the requirements for demand of

payment to damages.

Formality Check

When an application is filed and any other necessary documents, namely amendments

in writing and opinion statements, are submitted, they are checked as to whether they

satisfy the formality requirements stipulated by Trademark Law. If the formality

requirements are satisfied, the date when the application is submitted to the

Commissioner of the Patent Office will be approved as the filing date. If formality

requirements are not satisfied, an invitation to amend will be sent to the applicant. If

the correction is made in writing, the date when the correction is submitted will be

approved as the filing date. On the other hand, if no correction is made, the

application will be dismissed.

52

Substantive examination

An examiner examines whether a trademark application satisfies requirements

stipulated in the trademark Law. To register a trademark, the trademark Law

stipulates satisfying the formality requirements as above mentioned as well as

substantive requirements as below:

1- A trademark shall have distinctiveness

Trademarks such as trademarks indicating goods or services with their common

names or indicating the place of sale or use of goods and the quality or place of

provision of services are unregistrable as trademarks lacking in distinctiveness to

distinguish goods or services from those provided.

2- A trademark shall not fall under the grounds for unregistrability

A trademark which is identical with or similar to a national flag, a trademark that is

liable to contravene public order and morality and a trademark identical with or

similar to a registered trademark of other parties used with respect to identical or

similar goods or services and liable to cause confusion over goods or services

connected with the business of other parties are not registrable to protect the public

interests and self-profit.

3- Designation of Goods and Services

To file an application for registration of a trademark, an applicant needs to designate

one or more items of goods or services with respect to which the trademark is to be

used in accordance with the “classification of goods and services”.(Class 1 - 45)

4- First Application

Under the Japanese Trademark Law employing the “First to File Rule”, the first file

application is entitled to have its trademark registered in case where two or more

applications are filed for identical or similar trademarks designating identical or

53

similar goods or services. If such trademark applications are filed on the same day, the

applicants need to consult with each other to pick up an “applicant eligible to have a

trademark registration”.

In case where no agreement is reached through such mutual consultations among the

applicants, an eligible applicant may be chosen by the drawing of lots conducted in a

fair and just manner by Commissioner of Patent Office.

Decision of Registration

After substantive examination, if there is no reason for refusal, the examiner allows

registration, within the period specified by Cabinet Order.(As a general rule 18

months from filing date).

Parties receiving decisions of registration must pay the registration fee within the

specified period and can choose to either pay lump-sum or two installments.

When the specified registration fee is paid, registration of establishment of the

trademark right is made, and the trademark is registered in Trademark Register kept in

the Patent Office.

Also, certification of trademark registration is delivered to the new right holder and

gazette containing the trademark is issued on CD-ROM. If no registration fee is paid,

the application is dismissed.

The term of trademark right is ten years from the date of registration of establishment.

The term may be renewed by requirement for registration of renewal from the

trademark right holder.

Opposition to the Granting of a Trademark Registration

Post grant opposition is admitted in Japan. When the establishment of a trademark

right is registered, the registered trademark, the designated goods or services are

inserted in a gazette containing the trademark. Any parties objecting to the registration

54

may file an opposition with the Commissioner of the Patent Office within two months

from the date of issue of the gazette.

When an opposition to a trademark registration is filed, a collegial body composed of

three or five trail examiners conducts a trail. When there are the reasons for

oppositions to be revoked, it notifies the reasons for revocation and gives an

opportunity to submit an opinion statement. If the reason for revocation is not

resolved, the collegial body rules the registration. Any parties to the ruling to revoke

may file an appeal with the Tokyo High Court.

When the collegial body determines that the reason for revocation is solved by the

opinion statement, or that there is no reason for opposition, the registration is

maintained.

Trail System

Decision of granting or refusal regarding trademark applications are rendered by

examiners. However, if there are improper processing and a deficiency brought about

due to later reasons, or if there are improper conditions such as non-use or unfair use

of a registered trademark, leaving such conditions impairs the interests of the

applicant and the general public.

Therefore, Japanese Trademark Law provides for a trail system to correct improper

processing after registration of the trademark. When a trail is demanded, a collegial

body composed of three or five trail examiners oversees the trail taking semi-judicial

procedures. The types of trails are as follows:

1- Trail against a decision of refusal

2- Trail against ruling to decline amendment

3- T rail for invalidation of a trademark registration

4- Trail for cancellation of a trademark registration

A party having an objection to verdict may file an appeal with the Tokyo High Court.

55

Procedures for the protocol Relating to the Madrid Agreement

The protocol relating to the Madrid Agreement Concerning the International

Registration of Marks has been effective since 14, 2000 in Japan. Upon conclusion of

the Protocol, Japan issued a declaration calling for 18 months time limit for

transmission of rejection and payment of the individual fee instead of the fee

stipulated in the Protocol about the international application and international

registration. Also, Japan has selected English as the Language for international

application and correspondence.

Procedures in relation to the request for territory extension designating Japan

When the International Bureau informs the request for territory extension designating

Japan based in the international registration, the request for territory extension is

deemed as a regular trademark application in Japan, and the stipulations of the

Trademark Law is applied to the subsequent international registration procedures.

Procedures to which Japanese Trademark Law does not apply as the result of the

administrative restrictions in the international register, such as the restrictions on

procedures for divisional applications or amendment, are exempted from application

of the Trademark Law.

After the publication of Notification of Designation by JPO, the Substantive

Examination of International Application will be carried out at the Madrid Protocol

Division based on following Items:

1- Checks on the goods and/or services with using of computer software support

(the Macro soft Excel based). The goods and services are examined in order to

understand what the goods and services are and what category of goods and

services they belong to, as well as specify search codes. (the similarity codes)

It worth mentioning that the classification of the goods and services has

already determined by International Bureau.

56

2- Trademark search

1) Absolute ground for refusal

• A preliminary search report to be done by an out source contractor

(JAPIO) under Books, Magazines, etc.

• G-search engines (news paper)

• The Internet for mark search, domain name, famous marks

2) Relative ground for refusal

• To be retrieved by cross-search (domestic trademark applications/

registration)

• JPO trademark search system (pronunciation and devices mark)

3- Drafting

1) Grant of protection

2) Notification for provisional refusal

3) Refusal (confirmation of refusal)

Remedy against refusal

The request for territory extension designating Japan is deemed as a regular trademark

application in Japan. As the result, for procedures to inform refusal to the request for

territory extension deemed as a trademark application or for demands for trail or

retrial, as a general rule procedures identical with those for regular trademark

applications and trademarks can be taken.

Also, the Trademark Law stipulates the requirements for application to Japan in case

of loss of protection of international registration by “the Central Attack” stipulated in

Section 6(3) in the Protocol and in case of denunciation of the Protocol by contracting

states of Protocol other than Japan.

57

JPO Anti-Counterfeiting Efforts

Considering the increasing seriousness counterfeits, the JPO has been taking various

countermeasures.

1) Collection of Information on Counterfeit Damage

In order to clarify damage suffered by Japanese Companies abroad, the JPO carries

out an annual Survey of Counterfeit Damages using questionnaires. Through offices

of related associations located in Beijing, Shanghai, Hong Kong, Seoul, Bangkok and

other cities, the JPO also investigates enforcement and operation aspects of local legal

systems. The results of these surveys and investigations are available on the JPO

website.

2) Provision of Information and Consultation to Japanese Companies

In 1998, the Counterfeiting Hotline was established within JPO to give advice to

Japanese corporations. The JPO also develops pamphlets addressing individual

countries in which counterfeit damages are caused and holds seminars for Japanese

companies in these countries in order to provide necessary anti-counterfeiting know-

how. Furthermore, the JPO will strengthen support for measures taken by Japanese

industry, in cooperation with the International Intellectual Property Protection Forum.

3) Approaches toward Infringing Countries

As approaches toward countries and regions including China, the Republic of Korea

and Taiwan, where counterfeit damages is serious, the JPO requests the government

of these infringing countries and regions to reinforce their crack down of counterfeits

through bilateral negotiations such as meetings of the heads of patent Offices and

high-level economic conferences. Also, within multi-regional frameworks such as the

WTO Council for TRIPS, the WIPO Advisory Committee on Enforcement of IPR, the

IPR Expert Meetings of APEC, and Meeting of the Intellectual Property Offices of

ASEAN with 3 Countries, the JPO requests that the governments of infringing

58

countries reinforce anti-counterfeit measures, emphasizing the importance of such

measures.

4) Support for infringing Countries

In order to improve the enforcement ability of countries and regions producing

counterfeits, the JPO provides support for developing human resources in the local

authorities concerned, such as customs and police officers and court officials. The

JPO also accepts trainees from other Asian countries every year. In 2001, the JPO

invited trainees to seminars in the Republic of Korea and Singapore.

5) Cooperation with Japanese Enforcement Authorities

With the aim of preventing the production and distribution of counterfeits in Japan,

the JPO makes efforts to cooperate with Japanese enforcement authorities such as

customs and police by responding to inquires on infringements from such authorities.

With more counterfeits coming into Japan from the Asian region, it will be necessary

to continue to reinforce such cooperation in the future.

6) Promotion of Public Awareness

In order to prevent innocent consumers from suffering harm due to counterfeits, the

JPO provides information on counterfeit distribution. The JPO also stresses the

importance of the protection of intellectual property with the aim of preventing the

consumers from intentionally buying counterfeits. In fiscal year 2001, the JPO opened

a site called “Fake Town” on its homepage.

59

Computer System Use

The Patent Office has digitized processes of application acceptance, formality

examination, substantive examination, registration and demand for a trail for the

purpose of a shorter examination period because of better trademark information

service and more efficient clerical work.

This computer system is called “Paperless System”.

1) Online Acceptance of Trademark Application

The Patent Office accepts trademark applications by using online system connecting

applicants and the Patent Office. On-line applications are filed using “personal

computer application soft-ware” given free of charge to applicants who wish to file in

this manner. On-line acceptance of trademark applications started in January 2000. As

of the end of 2000, approximately 80% of trademark applications were filed using this

on-line service.

2) Real time trademark search and preparation of drafts using electronic data

a) Real time prior trademark search is carried out on computers using trademark

information data. The way of reading the trademark and the characters making

up the trademark are used as a trademark keys.

b) Decisions of registration, notifications of reasons for refusal and decisions of

refusal, are preparing electronic data.

c) Electronic data is also used for preparation of the Trademark Register and

issuance of trademark gazettes.

3) On-line sending of draft documents to applications

Draft documents are sent on-line to the applicant if so desired.

60

4) On-line acceptance of demands for trail

Trails against a decision of refusal of a trademark application can be demanded on-

line.

The Patent Office is scheduled to develop an on-line acceptance system of demands

for trails for invalidation and cancellation of trademark registration, and is

continuously making efforts to expand its computer system for the purpose of

accelerated and stable assignment of rights in the trademark field.

Trademark Information Provision Services

Since March 31, 1999, The Patent Office has been providing Industrial Property

Rights Information though the Industrial Property Digital Library (IPDL) on its home

page.

Using this service, information on industrial property rights can be obtained free of

charge from every corner of the world.

In order to support foreign corporations in obtaining a trademark rights in Japan, the

Patent Office provides information on registered trademarks as well as pending

trademarks. Information on well-known trademarks in Japan is also provided on home

page.

I. Trademark Application Trends

The number of trademark application decreased in 1998, started to increase in 1999

and reached 143,093 in 2000 an increase of 17% over the previous year. In 2001, the

number decreased by about 18% over the previous year to 118,046.

On the other hand, the number of trademark registration has been gradually

decreasing due to an increase in the average number of classes designated per

application resulting from introduction of the multi-class application system in April

1997.

61

II. International Trademark Application Trends

1- Applications for International Registration (filed from Japan to overseas)

In 2001, both the number of applications for international registration and the number

of designated countries in creased. In 2002, the number of applications was 20 per

month and the number of designated countries was about 180 per month. China and

European countries were most frequently designated, with some applications

designating all Member countries without exception.

2- Applications for International trademark registration (filed from overseas to) Japan

The number of application increased in 2001 then decreased to about 430 per month

in 2002. Applications were filed from Germany, France, Switzerland and Italy.

III. Trademark Examination

The first action period (FA period) in trademark examination was 21 months at the

end of 1997. Due to measures taken to reduce the examination period, the FA period

was reduced to 10 months at the end of 1999.

Subsequently, despite the increase in the number of applications in 1999 and 2000, the

FA period remained at 11 months at the end of 2001.

IV. Accelerated Examination

In response to the needs for early examination of applications which are involved in

counterfeit and infringement cases and along with the globalization of economic

activities, the JPO implements the accelerated examination system in which the

examination process is accelerated when there is an urgent need for granting

application and a third party uses the trademark without the applicant’s consent.

Accelerated examination shall apply to trademark applications that satisfy the

following two requirements:

62

1- The applicant himself/herself or licensee has already started to use the trademark in

the application or made preparation for using it to a significant degree for the

designated goods or services.

2- There is an urgent need for granting a right (such as usage of trademark by a third

party and…)

V. Examination Guidelines for Trademarks

On January 1, 2002, the Eight Edition of the International Classification under the

“Nice Agreement concerning the International Classification of Goods and Services

for the Purposes of the Registration of Marks” entered into force. Along with this, the

First Attached Table of the Trademark Law Enforcement Order and the Attached

Table of Regulations under the Trademark Law, both of which stipulate

classifications for goods and services and goods and services assigned thereto, were

revised and put into force on the same day.

Accordingly, the JPO revised the Examination Guidelines for Similar Goods or

Services which stipulate goods or services deemed to be similar.

The major revisions are follows:

(1) Services assigned to class 42 were divided into four new classes

(i) Class 42 for Design and development of computer programs or

software

(ii) Class 43 for Provision of food and beverages and temporary

accommodation

(iii) Class 44 for Medical treatment, veterinary services, beauty salons

(iv) Class 45 for Ceremonial services, other services provided in

response to demand of individuals

63

Industrial Property Digital Library

Industrial Property information constitutes the latest technological information as

well as information that defines the scope of right. For this reason, it is important to

promote its positive use in corporate R&D and investment strategy for the

commercialization of R&D results.

In light of this, the JPO opened the Industrial Property Digital Library on its website

in March 1999 to increase access to industrial property information.

By accessing the IPDL, users can search 48 million of industrial property-related

documents such as gazettes concerning patents, Utility models, designs and

trademarks published since 1885 using document numbers and various classifications.

Additionally, users can also access related information such as the legal status of

applications, registrations, and appeals/trails as well as laws and guidelines. All

information is available free of charge.

In January 2000, the JPO installed dedicated terminals in public inspection facilities

including the NCIPI as well as its local inspection rooms and intellectual property

centers, and started to provide information via higher-speed and higher-definition

screens via dedicated lines, in addition to provision through Internet.

Since March 2000, the JPO has been providing search services (patents, utility

models, designs, and trademarks) for patent information beginners. For foreign users,

the JPO provides automatic English language translation for publications of

unexamined/ examined patent applications in addition to providing patent Abstracts of

Japan (PAJ).

In March 2001, the JPO started to provide FI and F-term search services in English

and expanded the scope of PAJ available publications to include those published since

1976. In March 2002, the JPO also started to provide number search services in

English. The JPO is currently working on disclosure of a database for patent

examination (CSDB) by the end of FY 2002.

64

The IPDL services will encourage the use of industrial property information in

identifying application and R&D trends of competitors, preventing overlapping

investment, and avoiding unnecessary disputes when deciding product designs or

names.

The number of hits to the IPDL per month rapidly increased, due to the

enhancement of services, from about 1 million in April 1999 immediately after the

services started to 3 million in April 2002. Patent and utility model searches were the

most frequently used, accounting for about 60% of the total hits, followed by

trademark searches with 20% and searches for beginners with 10%, these three types

of searches accounting for 90% of the total.

65

Chapter IV

Differences Between These Two Systems: The legislations for protecting a trademark, trade name, design etc., in each country

are respectively based on the proper legal system, so the current law system in each

country is different from each other. The protection of Trademarks enjoys a long and

rich legislative history in Iran, and it has given rise to an effective and wealthy

jurisprudence in this respect, It’s worth mentioning that Iran Trademark Law and its

Regulations as amended in 1958 were not revised during the recent years, in spite of

the changes and developments in protection and harmonization of Intellectual

Property Rights in compliance with International Treaties and Conventions. In

contrast, the Japanese Trademark Law has been frequently amended to meet the

needed requirements of the international treaties and conventions where the Japan is a

signatory to the major of these international treaties and conventions. Comparing

these two systems the basic rules thereof; principle of registration, first to file rule and

principle of examination by examiner are common but there are some variations to be

considered between these two systems that the most important ones are as follows:

1- Definition of Trademark As far as the definition of trademark is concerned, Iran trademark law does not

stipulate the protection of three-dimensional shapes and combination thereof with

colors. However in this definition the registration of pictures and wrapping as a

trademark is provided but it is not explicit whether or not the two-dimensional

pictures shall be deemed as a three-dimensional mark. Although based on this

definition the IP Office in practice recently started to accept the pictures of three-

dimensional marks and examine the said pictures of different sides and angles with

rely on this definition. The Japanese Trademark Law provides the protection for three-

dimensional shapes as well as any combination thereof with colors. But colors itself

and the numeral marks are not protectable in Japan according the said definition.

Although the examination guidelines of trademarks provides that in the case of

trademarks with more than two digits of numerals indicated by kana characters

representing their sounds where they are distinctive may be registered such as (one

two three).

66

2- Requirements for Registration

Regarding the requirements for registration according to Article 2(4) of the

Regulation of Iran Trademark Law in case of the registration of the trademark in

outside of Iran, the submission of a copy of the registration certificate, certified by the

issuing Office is imperative, while submission of such a document is not applied by

the Japanese Trademark Law.

3- Changes in Registered Marks

According to Article 11of Iran Trademark Law and 14 of it’s Regulation an applicant

may apply for any kind of changes or alternation in the mark, or addition in the class

of goods covered by the registered trademark, but in Japan after registration a mark

the request for such changes in Mark or addition of classes or goods is not possible,

therefore, in the case of changes of trademarks the applicants should file the

application separately.

4- Prior use

Regarding the right to use trademark by virtue of prior use the Japanese Trademark

Law provides that such a person shall have a right to use the trademark in respect of

said goods or services provided that he does so continuously. The same shall apply in

the case of a person who has succeeded to the business concerned. However, the

owner of the trademark right may request the person having a right to use the

trademark for his goods or services with a suitable indication so as to prevent any

confusion between the goods or services connected with the owner's business and

those connected with the other person's business. But according to the Iran Trademark

Law the person who has already used the Trademark with respect to designated goods

and services continuously, so on the reason of the previous and continues use, he shall

have the right to register the trademark in his own name. The Articles 16 and 20 of

this law constitute sufficient grounds for an opposition and cancellation action in this

regard.

67

It is notable that the registration of trademarks which are identical with, or similar to,

another person’s registered trademarks applied for prior to filling date of the

trademark application concerned and which are used on the designated goods or

designated services is prohibited in Japan. Where after registration, the registered

trademark has become a trademark falling under the said provision a trail may be

demanded for the invalidation of a trademark registration within prescribed period by

the law. The difference is that in Japan in the case of the expiration of 5 years, the

owner of the mark may request the person who used the trademark in prior for using a

suitable indication to prevent any confusion thereof, while in Iran according the

Article 22 of this law an opposition may be filed even after the expiration of 3 years

after registration of trademark if proving that the registrant was aware of the using of

the trademark by opposer on the date of registration.

5- Opposition System

Iran has opposition system after advertisement procedures, either against an applied or

an already registered mark that they are called administrative opposition and legal

opposition:

In administrative opposition, any body who considers that a trademark covered by an

application is confusingly similar to his own mark, within 30 days after the date of the

publication, may file an opposition with the IP Office.

In the event that the applicant does not comply with the opposition and does not

withdraw his application, the opposing party may refer the matter to the Lower Court

of Tehran within the period of time specified in the said Regulations, otherwise it

would proceed to registration. In the case of opposition against a registered mark, the

opposing party must directly file suit with the Tehran Lower Court and must request

the cancellation of the registration.

Japanese Trademark Law stipulates an opposition system allowing an opposition to a

trademark after it is granted a trademark right. The post-grant opposition system is

designed to allow any third party to file an opposition to a trademark right within a

certain period of time after the registration of its establishment and, if such opposition

is filed, the Patent Office to examine the adequacy of its disposal of registration and

68

correct defects if any. The objective is to enhance trust and confidence in trademark

registration for equitable public interest, whereby the Japanese Patent Office checks

its own decisions on trademark registration and corrects itself. This system has been

introduced to accelerate granting of trademark rights, and supersedes the conventional

pre-grant opposition system.

6- Trials System

In Iran all the requests for trials such as trial against examiner’s decision of refusal,

trial for invalidation of a trademark and trial for cancellation of a trademark, conducts

by the courts of Tehran. Any interested party may file a petition or demand for

invalidation or cancellation of a trademark in the courts and all the litigations arising

from the rights acquired by registering trademark will be dealing with by the courts of

Iran. But the Japanese Trademark Law provides for a trial system to allow a disposal

with such defects and inadequate situation arising there from to be corrected and

resolved, so as to protect the interests of applicants or the public interests. The

difference is that in Iran all the trials should be conducted by the courts of Tehran,

while Japanese system allows trials for every levels of decision made through JPO. In

Japan, a trial on the trademark registration may not be demanded in principle after

five years of the establishment of the trademark right while in Iran an action for

cancellation or invalidation of a trademark in principle may be filed within a period of

three years following the registration date of a trademark.

However according the Article 22 of this Law those who failed to file an opposition

against a mark within three years from registration date of the mark, can file such an

opposition after expiry of the said period by proving that on the date of registration,

the registrant was aware that the mark had been continuously used by the opposing

party, or by another person who has transferred the trade mark to him.

7- Defensive Marks

Iran Trademark Law does not provide additional protection for defensive marks which

is a system applied for a higher protection of well known marks. However according

to this Law the owner of a trademark right may apply for registration of addition of

69

classes or addition of goods to the registered trademark in the other classes in order to

prevent the use of the registered trademark by other parties wherein it may cause

confusion over the source of the goods or services. The said application will be

examined by the IP Office. If there is no reason to refuse the application for the

addition of classes or addition of goods or services, it will proceed to registration

regardless the trademark owner’s business. Nevertheless the procedure for registration

of these applications is the same as regular marks. (Article 11 of this Law and 14

Regulations)

8- Service Marks

The amendment of Japanese Trademark Law in 1991 includes express recognition for

service marks. Rather than define the word “service mark” itself, the statute was

simply amended so that all trademarks could be registered for services in addition to

being registered for goods. The statute, therefore, does not expressly define service

marks rather it allows marks to be registered for services. Service marks are all marks

that are used on services rather than on goods. The definition of service is broader

than the ordinary use of the term. It includes any intangible offerings made by

companies which are either purchased or capable of purchase by consumers. In Iran

service marks enjoy the same type of protection as the trademarks, since this law is

provides the registration and protection of Marks and no explicit recognition for

service marks. However, the service marks protected in Iran according to the Article

1(2) of the Paris Convention.

9- Restoration of Trademark Right

In Japan by the provision of Restoration of trademark right another chance is provided

beyond the 6 months after expiration of trademark time for the owner, if the renewal

application cannot be filed within the prescribed time period for reasons beyond the

control of the owner, he may make such request within 14 days (where he is a resident

abroad, two months) from the date on which the reasons ceased to be applicable but

not later than six months following the expiration of said time limit, while in Iran the

renewal applicant only may apply up to six months after the expiration of the validity

70

period of the registration and no provision for restoration of trademark right. Also no

notice will be published on the renewal of a mark remaining unchanged.

10- Re-Classification System

In Japan the “re-classification system” has been adopted to reclassify the designated

goods of trademarks registered under the indigenous Japanese classifications into

classes based on the international classification of goods so as to resolve the problem

caused by revision and promote the smooth operation of the Japanese trademark

system. Therefore, the owner of a trademark right resulting from a trademark

application filed before April 1, 1992 has to request the registration of a re-

classification within a period provided by the Trademark Law. The said application

for the registration of re-classification of the goods of which the formal examination

has been completed, will examined by an examiner and where a decision of the

registration of a re-classification is made, the re-classification of designated goods

with respect to a registered trademark right is registered, taking its effects upon that

registration. In Iran since the first classification of goods and services under the

Iranian Trademark Act dated 1931 was amended in 1958, the Article 21 of the

Regulation of the said Law provides that the Branch Office shall apply the new

classification when recording the renewal of a prior registration amending the class or

classes covered accordingly both in Register and the Certificate of renewal

registration of trademark. Therefore, the trademarks at the time of renewals request

automatically re-classify based on the designated goods and services without any

request for re-classification and the new classification will be applied.

11- Compulsory registration:

In Iran according the Article 1 of this Law the right to have a trademark is optional,

unless the Government declares it compulsory. Nevertheless under the Act on

Mandatory Indication and Registration of Trademarks on Goods such as

Pharmaceuticals, Foodstuff, and Cosmetics (1949) Pharmaceutical, medicinal,

veterinary and toilet preparations, packaged foodstuffs and beverages, must bear

registration number, public health permit number (in case of pharmaceuticals) the

name and address of manufacturer and country of origin. The purpose of this Act is to

71

facilitate the supervision on the source and producing of the goods that are directly

used or applied on the body and in order to prevent any infringement and imitation of

the said products. While in Japan having a Trademark is optional.

12- Publication

In Japan, after trademark application are filed, they are published as general rule and a

gazette is issued on CD-ROM. Publication of application are used for search of prior

trademarks as well as information provision about trademark applications by other

parties. The gazette can also be used as a written statement submitted as a warning to

a party suspect of regarding infringement. After establishment of Trademark right, the

information regarding the registered mark would be published in Trademark Gazette.

While in Iran there is no publication of application. Two notices are published in the

Official Gazette, before grant and the after registration. According this Law the IP

Office shall publish a notice in the Official Gazette about any trademark approved for

registration and if no opposition is filed within 30 days as from the date of publication

of notice, the IP Office shall register the mark. Then second notice will be published

in the Official Gazette within 15 days from the date of Registration.

One of the advantages of the publication of application in the Trademark Gazette is

that to protect the trademarks during the period from application for trademark

registration to the establishment of the trademarks (early protection of trademarks). In

principle, all the applications for trademark registration will be disclosed. Though the

publication of application has no legal effects, it enables the provision of information

regarding the applications and may be utilized as a document to be presented in case

of warning pecuniary claims.

Other differences:

Iran Trademark Law does not provide any provisions regarding the division of

application, conversion of application, priority claim declared as governed by the

Paris Convention, pledges of the trademark rights, protection of well know marks, and

penal provisions as well as special provisions for the requirements of Madrid System.

72

Recommendations:

As far as the trademark registration is concerned the core work in examining the

application is conducting search on the work as to determining on the first to file

procedure. Secondly as to determine the mark whether it is registrable or not is very

subjective, depends on the mark applied and other supplementary information

provided during the process of examination. Thirdly is the classification of goods and

services.

Though, the protection of trademark enjoys from an old and rich law in Iran as well as

the provisions of Paris Convention the necessary protection for trademarks at present

is provided but it needs to be updated and revised with changes incorporated to

comply with requirements under various international conventions such as Protocol

and Madrid Agreement. Based on this comparative study and survey between these

two systems the matters notable to be considered in the revision of this law as well as

the procedures thereof which are as follows:

As far as the scope of definition of trademark are concerned to clear the registrability

of the three-dimensional marks, whether two dimensional picture as a three

dimensional mark is registrable, since the registration of the pictures and wrapping as

a trademark is provided by the current law, as well as considering the protection scope

for color marks is a matter of importance.

Since a trademark which already registered or continue to use may have of a great

value and enable it’s owner to build up business reputation with respect of the goods

and services which is registered, therefore, providing precise provisions regarding

substantive and formality rules as well as the manners of in heritance or other general

succession of assignment and license needs to be considered.

The necessity of clearance regarding the protection criteria whether it is based on

goods and services or based on classification thereof. In the case of protection based

on goods and services the provisions for addition of goods and services shall be

cancelled and in the case of protection based on classification, the addition of goods

and services may be registered.

73

Providing special provisions regarding the registration of defensive marks which is a

system designated to protect the business reputation of the owners of the well-known

marks and higher protection of this marks.

The clearance and specify of the concepts of collective marks and certificate marks,

for the matter that the registration of these marks for the countries having traditional

and handicraft products is a subject of the importance rather than trademarks.

Service marks are all marks that are used on services rather than on goods. The

definition of service is broader than the ordinary use of the term. It includes any

intangible offerings made by companies which are either purchased or capable of

purchase by consumers. In Iran service marks enjoy the same type of protection as the

trademarks, since this law is provides the registration and protection of Marks and no

explicit recognition for protection of service marks. As the trademark and service

marks basically are different in function, so that the recognition of service marks is a

matter of importance.

Revising the domestic classification of goods and services in compliance with Nice

classification which is an international classification includes 45 classes for goods and

services while the domestic classification includes 36 classes. Also establishment of a

re-classification system in order to solve various problems caused by revision of

classification such as the complexity in retrieving and searching prior registered

trademarks, and a vagueness concerning the scope of the right, the owners of the

trademarks obliged to substitute the designated goods of their registered trademark

with classes of goods pursuant to International Classification of Goods and Services

to unify the classes of the designated goods.

Provisions regarding priority claim declared as governed by the Paris Convention in

Article 4 which is not mentioned in the current Act, as well as Special provisions for

applications under the Protocol of the Madrid Agreement is imperative.

In order to accelerate the procedures of the administrative oppositions and requests for

trails against examiner’s decision, provisions regarding authorization of the IP Office

as a sub-branch of the Judiciary for examination and pending to the administrative

74

oppositions and trails against examiner’s decision may take into consideration, and in

the case of dissatisfaction can be taken an action through the Court.

Establishment of a special industrial property service for publication of an official

periodical journal to the public including the reproductions of registered trademarks

according the article 12 of Paris Convention may take into consideration.

Apart from the above-mentioned matters, in order to ensure the smooth operation of

the Trademark Law and prompt and precise examinations, preparation an

Examination Guidelines is deemed necessary for the IP Office. Although, the

Trademark Law and its Regulations sets forth requirements for the registration of

trademarks and reasons for unregistrability, but since the principle of an examination

by an examiner adopted, the law allows an examiner to take an independent action to

register a trademark or refuse a trademark application. So with respect to a decision of

registration or a decision of refusal of a trademark, a judgment, a decision, etc. is

independently made by an individual examiner.

Therefore, it is practically required to prevent the Trademark Law from being

interpreted and executed differently from one examiner to another and ensure fair

judgments and decisions. The Examination Guidelines will deal with the handling of

trademark applications, requirements for registration, reasons for unregistrability,

examination procedures, etc. among matters stipulated in Trademark Law. With

respect to provisions difficult to understand and liable to cause different

interpretations, the guidelines offer an unified interpretation. With respect to

abstractive provisions, the guidelines present standard guidelines and handling

manners with specific examples given. In some sections, the guidelines standardize

procedures which applicants are required to take under the Regulations under the

Trademark Law. In Japan the Examination Guidelines for Trademarks were adopted

in 1921, as an internal standards worked out at the Office to enable examiners to

interpret and apply the Trademark Law on a uniform basis but not anything legal

without any binding power. The Guidelines were made public in 1971, in order to let

applicants know how their applications may judge by Patent Office and prior

knowledge on registration of trademarks in Japan.

75

The researcher hopes that the above recommendations especially on the fully

computerization and practical work of Information Center as well as training program

will be reviewed and more steps to be taken to utilized all the facilities that the

Intellectual Property Office has to foster human resources in performing the business

activities with due attention to increasing the number of applications in the recent

years with the acquired advanced expertise of the system in the future.

76

Conclusion While legislation concerning intellectual property rights needs to be constantly

updated and modernized in order to be harmonized with International Standards and

keep in step with the new technologies, they are also needs to be efficiently

administered and effectively enforced.

Effective protection of intellectual property rights is essential since it provides the

necessary incentives for fair competition, as otherwise it could be freely used.

Development of skills and competence in the administration and management of

intellectual property rights needs greater attention and focus in view of the

increasingly global dominance of the knowledge based economy.

Governments need to be made aware of the considerable economic value of ensuring

effective intellectual property protection and the consequent socio-economic benefits

through enhancement of qualitative competitiveness in trade and commerce, and

greater possibilities of technological advancement in the process of moving from the

industrial to the information age. Towards this end, knowledge promotion, education

and training, integration of technology and industrial policy with the necessary

infrastructure development, as well as concurrent promotion of social justice are

essential factors to be considered for effective implementation.

Most importantly, at the national level, there needs to be a political will to adopt or

adapt the intellectual property system, and to administer it effectively, in order to

benefit optimally form its economic value.

National intellectual property legislations should be modernized, constantly updated

and refined to keep apace with international developments and the needs of emerging

technologies. They should provide for stern penal provisions against infringements

and against piracy and counterfeiting. Their strict enforcement should be ensured. The

ultimate test of the efficacy of a modern legislation lies largely in its effective

enforcement through strengthening of the enforcement mechanisms. Strong

77

intellectual property protection with adequate and modernized legislation and its

effective enforcement is essential for ensuring economic growth.

The importance and role of Intellectual Property Rights, in its broadest sense, in

economic and social development programs is undeniably unquestionable. Also, in

terms of social and economic welfare, each country needs a strong and efficient

Intellectual Property system. Serious and fundamental protection of owners of

Intellectual Property Rights, shall flourish creative and innovative talents and, while

creating the required legislative safety and providing stable environment, it shall

attract the confidence and trust of the owners of Intellectual Property Rights. The

importance and significance of this matter in the increasing growth of economy,

science, technology and investment is so clear and obvious.

In view of the above, and considering the importance and magnitude of Intellectual

Property Rights for the socio-economic development and bearing in mind the

necessity of presence in the world markets and facilitating investment, technology

transfer and also the efforts exerted by countries and international communities for

alignment and standardization of the Intellectual Property Laws, and above all, in

view of the Exports Expansion and Development Policy and the Trade-based

Economic Growth Policy of developing countries and the necessity of membership in

International Trade Organizations such as World Trade Organization, Islamic

Republic of Iran, in accordance with International Conventions and Treaties, and

considering international trade and legal standards, norms and arrangements, is trying

to prepare and revise national laws. In the meantime, through modernization of those

organizations, offices and institutions involved with Intellectual Property matters on

the basis of updated standards and norms, and emphasizing on training of experts and

other human resources involved with Intellectual Property matters, is ultimately going

to establish a strong and efficient system for adequate protection of Intellectual

Property Rights in the country.

78

Trademark Procedures in Iran

(from Application to Registration)

Trademark Application

Payment of Application fee Formality Check

Substantive Examination

A reason for refusal

Notification for Amendment

Amendment No Amendment

Notification of Rejection

No reason for refusal

Dismissal ofApplication

Appeal to the Court

Publication of Application

No opposition Opposition

Payment of Registration fee

Registration of Trademark

Publication in Official Gazette

Notify to Applicant

Comply with opposition No comply with Opposition

Withdrawal the Application

Refer of opposer to the Court within 60 days

30 days opposition period

Formality imperfectionNo problem in

formality check

Appendix A

Appendix B

79

80

Appendix C

• Statistical Appendices for 5 years

A- Statistics of Trademarks in I.R. of Iran

Trademark Application Trademark Registration

1998 6,278 2,528 1999 9,494 3,796 2000 10,220 3,750 2001 11,082 4,437 2002 13,023 4,488

B- Statistics of Trademark in Japan

Trademark Application Trademark Registration

1998 112,469 132,066 1999 121,861 123,656 2000 145,668 94,369 2001 123,755 93,548 2002 117,406 105,114

Looking through the enclosed tables, the number of trademarks registered in Iran, has endorsed

a substantial growth which is a clear evidence proving the excessive efforts of Iran exerted in

Intellectual Property Rights in the course of the recent years. It is worth mentioning that the

system of Trademark Application has been Multi-classes per application from first.

On the other hand in Japan, the number of trademark registration has been gradually decreasing

due to an increase in the average number of classes designated per application resulting from

introduction of the multi-class application system in April 1997.

It is notable that in Japan the number of registrations include the number of renewal

registrations and defensive mark registrations.

81

Research References

1. Supplementary Textbook of Japan Patent Office 1.1- Japanese Trademark Law 1.2- Japanese Trademark Jurisprudence 1.3- Examination Guidelines for Trademark in Japan 1.4- Examination Standards for Similar Goods and Services 1.5- Global Protection of Industrial Property Rights 1.6- Outline of Intellectual Property Law 1.7- Outline of Intellectual Property 1.8- Outline of Trademark System 1.9- Outline of Trademark Law in Japan 1.10- Outline of Trademark Trail and Opposition System 1.11- Protection of Trademarks and Prevention Unfair Competition 1.12- Protection of Well Known and Famous Trademark 1.13- Counterfeiting Problem Countermeasure Against Counterfeits 1.14- Famous and Well known Marks 1.15- Protection of Well known Marks in Asia 2. Other materials 2.1- Annual Report of 2002

2.2- Outline of Japanese Trademark System 2001

3. Study Visit and Discussion 3.1- Trademark Division Of Japan Patent Office and discussion with related officers

A Comparative Study on Japanese Trademark Protection ... · A Comparative Study on Japanese...

Documents

Transcript of A Comparative Study on Japanese Trademark Protection ... · A Comparative Study on Japanese...